%■ 








'J s ■ xJV 







x'f' 



•^0 



c^. 



> 






■of 

I I r 







r}^ I. 













?^ '' '' 






^ ^>^^:^ ^^ ^. ^ 



O C' 



'<" 



\> ^, Y o o 







.^^!-* 









' V 1. 









.>.^.^; 



iO -^ 









V^ \ ' « ^ '^ 



.^^ . ^ '• 



.0 o 



,0 






'■ V. 



■■^ *' .-.s'^ -^ 



;\ 



^^ 



,% 



-f .^"^Z'''^^ 






•>'- 






.<-^- 






^^-^- 






■xV 



<\ 



^c^ 







o_. 



,^ 















^c> ' 







/.6 



H. HOWSON, Sr., 



ON 



^ 



REISSUED PATENTS. 



A WARNING TO INVENTORS. 




w 



14 18821 



a 



Entered according to Act of Congress, in the year 1882, 

BY H. HOWSON, Sr., 
in the Office of the Librarian of Congress, at Washington. 



::^^t.>-vO-»A-Jyr 



/^l*>^A-*» 



REISSUED PATENTS. 



Comments 



ON THE 




Decision of the U. S. Supreme Court 



IN THE CASE OF 



Miller vs. The Bridgeport Brass Co., 



Practical Effects of the Decision, and 
its Warning to Inventors. 



T. & J. W. JOHNSON & CO., 
LAW BOOKSELLERS AND PUBLISH 
535 CHESTNUT STREET, 
PHILADELPHIA, PA. 




^^l' 



Entered according to Act of Congress, in the year 1882, 

BY H. HOWSON, Sr., 

in the Office of the Librarian of Congress, at Washington. 



% 



Press of ^ 

Times Printing House, ^ 

725 Chestnut St., \ 

Philadelphia. 



TO THE 

HON. M. D. LEGGETT, 

Who so admirably filled the office of Commissioner of 

Patents from January, 1871, to October, 1874, 

this little volume is inscribed, as a mark 

of respect, by his friend, 

H. HOWSON, Sr. 



PREFACE. 



A recent decision of the United States Supreme Court, 
relative to reissued patents, has suggested the following 
pages, designed to point out the important and, it is believed, 
beneficial results likely to accrue from it. 

In addition to a brief review of the opinion of the Court, 
given in the first chapter, full copies of its text, of the Reis- 
sued Patent passed upon, and of the original patent, are 
printed as an Appendix. 

The value and importance of a remedy are fully appre- 
ciated only by those who fully appreciate the mischiefs 
against which the remedy is directed. 

There are not wanting persons whom sorry experience 
has made only too familiar with some of the more salient 
evils which have sprung from the undue and untimely 
expansion of patents by speculative or blackmailing reis- 
sues ; but, after all, the knowing are the minority, and there 
are, moreover, many evils, which though due, wholly or 
partly, to the bad practice, have not come to be associated 
with it in the public mind, because, perhaps, the connection 
is not, without reflection, apparent. 

Such, for example, are the evils of recklessness in the 
preparation and prosecution of applications for original 



patents, and the ease with which men, utterly incompetent, 
have entered and maintained themselves in the profession 
of soliciting patents. 

Upon these and cognate mischiefs the writer has dwelt, 
with the fullness and plainness which the subject calls for : 
what he has said is based partly on the published comments 
of different Commissioners of Patents, partly on information 
derived from prominent officers of the Patent Office, and 
partly on his own long experience, and that of others, in 
patent matters. 

Able, trustworthy and well-informed solicitors will 
recognize the evils referred to, and admit that they justify 
and call for plain speaking. 

A clear understanding of the evils traceable, wholly or 
in part, directly or indirectly, to the license which has so 
long prevailed in the matter of enlarging patents by reissue, 
should bring about a lively appreciation of the benefits to 
be expected from the stand taken by the Supreme Court in 
" Miller vs. The Bridgeport Brass Company." 



CONTENTS. 



Extracts from and comments upon the recent decision 
of the Supreme Court, U. S., in the case of Miller vs. The 
"Bridgeport Brass Company. 



Practical and beneficial effects of the decision, and its 
warning to inventors. 

Change of practice in the Patent Of^ce and in the courts 
suggested by the decision. 

The disturbing effect of the indiscriminate reissuing of 
patents on the industrial arts. 

The evil effects on Patent Office Practice. 

How the decision will affect inventors and patentees. 

How it will affect manufacturers under reissued patents. 



APPENDIX. 



Original patent of J. E. Ambrose (illustrated). 

Reissued patent of J. E. Ambrose. 

Decision in full of the U. S. Supreme Court in the case 
of Miller vs. The Bridgeport Brass Company. 



Reissued Patents. 



EXTRACTS FROM, AND COMMENTS UPON, THE RECENT 

DECISION OF THE SUPREME COURT, U. S., 

IN THE CASE OF MILLER VS. THE 

BRIDGEPORT BRASS CO. 



Considerable uncertainty and anxiety have lat- 
terly prevailed among those interested in such mat- 
ters, as to the construction of the law of Reissues. 

Many patent lawyers have seen, or thought 
they saw, a tendency on the part of the Supreme 
Court towards a construction of the law very dif- 
ferent from that wliich has long been the generally 
accepted construction. 

The moot point has been the validity or inva- 
lidity of Reissues containing claims of broader scope 
than the original patents, and the importance of 
the question resides in the fact that the great 
majority of Reissues are obtained for the express 
purpose of securing more extensive claims. 



12 

The alarm has been vigorously raised, and as 
vigorously contradicted, that the tendency "of the 
Supreme Court, as indicated by a number of decis- 
ions rendered during the last few years, was 
towards the ruling, that where the claim of an orig- 
inal patent is valid, and the description sufficient 
to support that claim, there is no warrant for a 
Reissue. 

The section of the patent statutes providing for 
Reissues reads as follows : 

" Whenever any patent is inoperative or invalid by rea- 
son of a defective or insufificient specification, or by reason 
of the patentee claiming as his own invention or discovery 
more than he had a right to claim as new, if the error has 
arisen by inadvertence or mistake, and without any fraudu- 
lent or deceptive intention, the Commissioner shall, on the 
surrender of such patent, and the payment of the duty 
required by law, cause a new patent for the same invention, 
and in accordance with the corrected specification, to be 
issued to the patentee." 

It is obvious, as remarked by the Supreme 
Court in its late decision, which it is the special 
intention of these pages to bring to the notice of 
inventors, that ** whilst the law authorizes a reissue 
when the patentee has claimed too imicJi, so as to 
enable him to contract his claim, it does not. in 



13 
terms, authorize a reissue to enable him to expand 
his claim." 

But the generally accepted interpretation of the 
law has been that a claim narrower than that which 
might properly have been based upon what is set 
forth in the descriptive portion of an original patent, 
is such a defect or insufficiency of specification as 
may lawfully be corrected by a Reissue to enlarge 
the claim. 



The lately rendered decision of the Supreme 
Court, in the case of Edward Miller & Co. vs. The 
Bridgeport Brass Company, has been looked for- 
ward to as likely to settle the doubts which have 
existed on the subject. 

While that decision does not go to the extent 
of holding that Reissues for the purpose of securing 
larger or expanded claims are not warranted by the 
law, it is yet of great interest and importance, not 
only as showing with what a jealous eye the Supreme 
Court regards expansions of claim by Reissue, but 
as to a certain extent determining and defining the 
conditions under which alone the court may here- 
after be expected to uphold such cases. 



14 

The case in hand was that of a second reissue 
of a patent originally granted in October, i860, for 
an improvement in lamps, the reissue having been 
obtained fifteen years afterwards, or in January, 
1876. 

The facts of the case, are briefly set forth in the 
decision, as follows : 

" The original patent described a combination 
of devices, amongst other things, tzvo domes or 
deflectors, one above the other, elevated above a 
perforated cap, through which a wick tube and 
vapor tube ascended." 

" It was claimed that this combination of devices, 
especially including the two domes, which admitted 
the external air between them for producing a more 
perfect combustion, would make a lamp, which, 
zvithoiit a chimney ^Awdi without danger of explosion, 
would burn those hydrocarbons which are volatile 
and contain an excess of carbon. The invention 
proved a failure, but it was found that tlie use of one 
of the domes (and the other parts) with the restoration 
of the chimney, would be a real improvement, and 
both plaintiff and defendant made such lamps in 
large quantities. Fifteen years after the original 
patent was granted, the patentee (or rather his 



15 
assignee) discovers that the improved lamp was 
really a part of his original invention, and that by 
inadvertence and mistake he had omitted to claim it." 
Upon this state of facts, the court said : " We 
think that the court below was clearly right in hold- 
ing that the invention specified in the second claim 
of the reissued patent (the one in question) is ;z^/the 
same invention described and claimed in the original 
patent." 

Had the decision rested here, it would not, 
perhaps, have been at all striking, or momentous, 
for it will probably occur to the reader that the case 
stated by the. court was a clear and extraordinary 
abuse of the privilege of reissue, the maintenance of 
which would have been singular. 

The court, however, proceeds to say : 
" But there is another grave objection to the 
validity of the reissued patent in this case. It is 
manifest on the face of the patent when compared 
with the original, that the suggestion of inadvertence 
and mistake was a mere pretense ; or if not a pre- 
tense, tJic mistake was so obvious as to be instaittlv 
discoverable on opening the letters patent, and the 
rigJit to have it corrected ivas abandoned and lost by 



i6 

unreasonable delay. The only mistake suggested is, 
that the claim zvas not as broad as it might have 
been. This mistake, if it was a mistake, was 

APPARENT UPON THE FIRST INSPECTION OF THE 
PATENT, AND IF ANY CORRECTION WAS DESIRED, IT 
SHOULD HAVE BEEN APPLIED FOR IMMEDIATELY." 

. . . '' These afterthoughts, developed by the sub- 
sequent course of improvement, and intended, by an 
expansion of claims, to sweep into one net all the 
appliances necessary to monopolize a profitable 
manufacture, are obnoxious to grave animadver- 
sion." . . . 

*' If a patentee who has no corrections to sug- 
gest in his specification except to make his claim 
broader and more comprehensive, uses due diligejice 
in returning to the Patent Office, and says, ' I omitted 
this,' or * My solicitor did not understand that,' his 
application may be entertained, and on a proper 
showing, correction may be made." 

" But it must be remembered that the claim of 
a specific device or combination, and an omission to 
claim other devices or combinations apparent on 
the face of the patent, are, in law, a dedication 

TO THE public OF THAT WHICH IS NOT CLAIMED." 



'7 

" It is a declaration that that which is not claimed 
is eithei' not the patentee's invention, or, if his, he dedi- 
cates It to the public. This legal effect of the patent 
cannot be revoked unless the patentee surrenders it 
and proves that the specification was framed by real 
inadvertence, accident, or mistake, without any 
fraudulent or deceptive intention on his part ; and 
this should be done ivith all due diligence and speed. 
Any unnecessary laches or delay in a matter thus 
apparent on the record, affects the right to alter or 
reissue the patent for such causes. If two years' 
public enjoyment of an invention with the consent 
and allowance- of the inventor, is evidence of aban- 
donment, and a bar to an application for a patent, a 
public disclaimer in the patent itself shoidd be con- 
strued equally favorable to the public. Nothing but 
a clear mistake, or inadvertence, and a speedy appli- 
cation for its correction, is admissible where it is 
sought merely to e?ilarge the claim!' .... 

" Now whilst, as before stated, we do not deny 
that a claim may be enlarged in a reissued patent, 
we are of opinion that this can only be done when 
an actual mistake has occurred, not from a mere 
error of judgment (for that may be rectified by 
appeal); but a real, bona fide mistake inadvertently 



committed, such as a Court of Chancery^ in cases 
within its ordinary jurisdiction^ woidd correct. Re- 
issues for the enlargement of claims should be the 
exception, and not the rule." 

It has been suggested that the portions of the 
decision which we have quoted, may be regarded as 
mere "dicta," and indeed they are distinctly referred 
to as such in the '' syllabus " prepared for the printed 
copy of the opinion, which appeared in the Official 
Gazette of the Patent Office. We do not understand, 
however, that this syllabus was so prepared with the 
knowledge and sanction of the court, or of any one 
connected with it, nor do we conceive that these parts 
of the decision can be regarded by the lower courts 
or the Patent Office as mere " extra-judicial " 
opinions, or " dicta" of no binding force. 

The court not only propounds the doctrine of 
abandonment by laches or delay, as applicable to 
expanded Reissues, but actually applies the doc- 
trine to the particular case in hand, in the following 
words : 

" We think that the delay in this case was 
" altogether unreasonable, and that the patent could 
*' not lawfully be reissued for the purpose of enlar- 



19 

" ging the claim and extending the scope of this 
" patent" 

It will be seen that while the court has not 
gone so far as to hold that no reissue with an 
expanded claim is valid, but, on the contrary, says it 
does not deny, that in proper cases, and under proper 
conditions, " a claim may be enlarged in a reissued 
patent ; " it has yet defined and limited those cases 
and conditions in such a way as must necessarily 
tend vitally to affect the status of many existing 
Reissues, and to greatly narroAV for the future the field 
within which the right of Reissue may be exercised. 

The first noticeable point is that to allow 
of such a Reissue, '' an actual mistake must have 
occurred, not from a mere error of judgment, but a 
real bona fide mistake, inadvertently committed ; 
such as a Court of CJianceiy, in cases zvithin its 
ordinary jurisdiction, woidd correct!' And again, 
" This legal effect of the (original) patent cannot be 
revoked unless the patentee surrenders it and proves 
that the specification was framed by real inadver- 
tence, accident, or mistake, without any fraudulent 
or deceptive intention on his part." 



20 



It will be observed that a sharp distinction is 
drawn between a mere " error of judgment" and such 
a mistake as will warrant a reissue of the kind under 
discussion, and secondly it is said that there must be 
proof oi\k\^ mistake. 

This seems to point to the necessity of the 
adoption by the Patent Office of rules much more 
strict and exacting, for the governance of applica- 
tions for expanded Reissues, than those which 
have heretofore prevailed. 

Hitherto, if the description of an original patent 
contained matter not claimed, but which, so far as 
appeared, was new and original with the patentee, 
and was patentable, this has, in practice, been 
deemed sufficient to warrant the allowance of a 
Reissue with a claim to that matter. In other words, 
the description or illustration in the original patent, 
of matter which, so far as appears, was new 
and original with the patentee, has been practically 
regarded as proof sufficient, in affirmance of the 
patentee's oath, that the failure to claim that matter 
in the original patent was an " inadvertence, acci- 
dent, or mistake," justifying a Reissue for the pur- 
pose of claiming it. 



21 



But if the Patent Office is to apply to its action 
in considering Reissue applications, rules the 
same as, or similar to, those which are mapped out 
in this decision for governing the consideration of 
Reissued Patents, its practice must be considerably 
changed. 

It is not our purpose here to discuss how far it 
may be proper or practicable for the office to estab- 
lish and carry out rules for the requisite ''proving'' 
of '' actual mistake' as distinguished from " mere 
error of judgment^" or just what state of facts is 
likely to be deemed to constitute a "mistake" as so 
distinguished. 

It is sufficient for present purposes to point out 
that if the action of the patent office in passing upon 
applications for expanded Reissues is in any degree 
to correspond with that of the courts in considering 
expanded Reissues, rules much stricter and more 
exacting than those now and heretofore in vogue, 
must prevail there. 

A second and not less important consideration 
raised by the decision, is what may be regarded as 
the nezv doctrine, as applied to this class of cases, 
of abandonment by laches or delay. 



As we understand the decision, it clearly indi- 
cates that had the Reissue been obnoxious to no 
other objection, it must yet have been condemned, 
owing to the lapse of time between the taking of the 
original and that of the Reissue, considered in con- 
nection with the fact that in the interim other parties 
had largely manufactured articles, which, while 
covered by the Reissue, were not covered by the 
original patent. 

It is true that the case before the court appears 
from the decision to have been a peculiarly aggra- 
vated one in this particular, fifteen years having 
been allowed to elapse. 

But it appears to us that the language and rea- 
soning of the court would apply, and may reason- 
ably be expected to be hereafter applied, when occa- 
sion arises, to most, if not all, cases where there has 
been any unreasonable delay, at least if attended 
with the acquisition of adverse rights by others. 

This understanding of the meaning and force 
of the opinion, seems to be justified by the following 
passage, which occurs in d>e contemporaneous 
opinion of the court m James vs. Campbell et al. 



23 

"Of course, if by actual inadvertence, accident 
or mistake, innocently committed, the claim does 
not fully assert or define the patentee's right in the 
invention specified in the patent, a speedy application 
for its correction, before adverse rights have accrued, 
may be granted, as we have explained in the recent 
case of Miller vs. Bridgeport Brass Company'' 

Just how much or how little delay will con- 
stitute " unreasonable" delay must, presumably, 
depend somewhat upon the circumstances of each 
particular case ; but it sufficiently appears that the 
more obvious the alleged mistake, the more unsafe 
must be any considerable delay. 

Says the court of the case before it : " The only 
mistake suggested is that the claim was not as broad 
as it might have been. This mistake, if it was a 
mistake, was apparent upon the first inspection of the 
patent, and if any correction was desired, it should 
have been applied for immediately!' And in the 
general discussion of the law which follows, these 
passages occur : 

" Any unnecessary laches or delay in a matter 
thus apparent on the record affects the right to 
alter or reissue the patent for such cause." 



24 

" Nothing but a clear mistake or inadvertence 
and « speedy application for its corrcctio7t^ is admissi- 
ble when it is sought merely to enlarge the claim." 

"And when, if a claim is too narrow, that is if 
it does not contain all that the patentee is entitled 
to, the defect is apparent on the face of the patent, and 
can be discovered as soon as that document is taken 
out of its envelope and opened, there can be no valid 
excuse for delay in asking to have it corrected^ 

" But in reference to Reissues made for the pur- 
pose of enlarging the scope of the patent, the rule of 
laches should be strictly applied, and no one should 
be relieved luho has slept npon his rights, and has 
thus led the public to rely on the implied disclaimer 
involved in the terms of the original patent. And 
when this is a matter apparent on the face of the instru- 
ment, upon a mere comparison of the original patent 
with the Reissue, it is competent for the courts to decide 
whether the delay zuas unreasonable, and wJietJier the 
Reissue zvas therefore contrary to laiv and void^ 

The evil which the court points out, and to the 
destruction or diminution of which its decision is 
directed, is a very prevalent and gross abuse of 
the privilege of Reissues, the setting up as " mis- 



25 

take or inadvertence" in the securing of the original 
patent of " aftertJionghts, developed by the subsequent 
course of improvements^ and intended by an expansion 
of claims to siveep into one net all the appliances 
necessary to monopolize a profitable manufacture!' 

Says the court : " By a curious misapplication 
of the law (of Reissues), it has come to be princi- 
pally resorted to for the purpose of enlarging and 
expanding patent claims. And the evils which have 
grown from the practice have assumed large pro- 
portions. Patents have been so expanded and 
idealized, years after their first issue, that hundreds 
of mechanics and manufacturers who had just rea- 
son to suppose that the field of action was open, 
have been obliged to discontinue their employ- 
ments, or to pay an enormous tax for continuing 
them." 

The net result of the decision seems to be that 
hereafter the maintenance of an expanded Reissue 
claim cannot reasonably be expected, unless it 
appear, ist, that the taking of the original patent 
with a less extensive claim arose not from '* mere 
error of judgment," but from *' real bona fide mis- 
take, inadvertently committed ;" and, 2d, that the 



26 

"mistake" was corrected by Reissue without any 
"unreasonable" delay. 

The likely consequence is that Reissues for the 
enlargement of claims will be, as the court says they 
should be, the exception^ and not, as heretofore, the 
rule, — a result which, while it may work hardship 
in some cases, is upon the whole highly desirable. 

Undoubtedly, too, the doctrine of the decision is 
likely to work "injury" to some of what are termed 
"vested interests" under existing Reissues; as to 
how far this is a subject for regret there may perhaps 
be wide difference of opinion. 

But as to the general wholesomeness of the 
rules announced, for future guidance, there will, 
we think, be more unanimity of sentiment. 

The first and most important practical lesson 
the decision teaches, is the necessity of care in the 
procuring of original patents, of applying to that 
business the homely maxim that, " what is worth 
doing at all is worth doing well." 

The hitherto accepted doctrine as to Reissues 
has tended to breed carelessness about this matter ; 
in times past it was not uncommon for inventors, 
under the advice of solicitors, to accept any kind of 
claims, for the sake of obtaining a patent quickly, 



27 

trusting to a subsequent Reissue at leisure to make 
the patent good. Such advice and action, always 
bad, should no longer be possible. 

The decision further practically enforces the 
not unwholesome lesson that a patent being a species 
of contract between the patentee and the public, the 
former must, out of a proper regard for the rights of 
the public, be held to reasonable care and circum- 
spection intheperformance of that part of the contract 
which consists in " particularly pointing out and dis- 
tinctly claiming the part, improvement or combi- 
nation which he claims as his invention or dis- 
covery." 

"It must be remembered," says the court, "that 
the claim of a specific device or combination, and an 
omission to claim other devices or combinations 
apparent on the face of the patent, are in law a dedica- 
tion to the public of that which is not claimed',' " a 
declaration that that which is not claimed is either not 
the patentee's inveiition, or, if his, he dedicates it to 
the public." 

This doctrine may, perhaps, be regarded as a 
rather startling departure from that propounded by 
the Supreme Court, nearly thirty years ago, in the 
case oi Battin vs. Taggart. 



28 

However this may be, and allowing the right 
of Reissue to be not merely a privilege, but in the 
strictest sense a right, not merely a creation of 
statute, but an equity, which had, before the stat- 
ute, been recognized and acted upon by the courts 
and the Patent Office, it is yet hard to see anything 
unreasonable or inequitable in the proposed restric- 
tions upon the exercise of the right. 

They seem to be no more than a practical 
application to particular cases of " reformation of 
contract " of the elementary doctrine, of general 
application in like cases, that equity cannot favor 
unreasonable delay or ladies. 

The equity of Reissues to enlarge claims, if 
equitably, i. e., diligently and in good faith, resorted 
to, is distinctly recognized. 

It may be objected that the attendant doctrine 
of abandonment by laches introduces into the treat- 
ment of the subject an element not only novel, but 
uncertain ; and it may be suggested that if the right 
is to be limited in time, the limitation should be one 
ascertained and fixed by statute. On the other 
hand, it may be urged that perhaps, upon the whole, 
substantial justice between patentee and public is 
more likely to be subserved by leaving the matter 



29 

to the determination of the courts, in the h'ght of the 
circumstances surrounding each particular case, than 
by providing any positive statutory limitation. 

In the meanwhile, the decision can hardly fail 
to be, so far, beneficial, if it forces upon inventors 
an appreciation of the truth that it is alike their 
duty and their interest to take all reasonable care 
and diligence to avoid the making of any implied 
''dedication" or "declaration of abandonment" by 
" mistake" — and if, notwithstanding their care, they 
do make such a " mistake," then to correct it 
promptly. 



Practical and Beneficial Effects of 
the Decision, and its Warn- 
ing to Inventors. 

CHANGE OF PRACTICE IN THE PATENT OFFICE AND 
IN THE COURTS SUGGESTED BY THE DECISION. 



The decision in the case of Miller vs. The 
Bridgeport Brass Company having been reviewed 
in its legal aspect in the foregoing chapter, it will be 
well to ascertain what will be the probable practical 
results of the rulings ; for it may be reasonably 
assumed that there will be no retrogression on the 
part of the Supreme Court from the stand taken in 
regard to expanded reissues, that the lower courts 
of the United States will follow the lead of the 
higher court, and that the Patent Office will, as 
usual, be guided in its practice by the decisions of 
the courts. 

The parties most aggrieved may, perhaps, 
look to legislation as a relief from the natural 
effects of the decision in question, but in the 
present temper of Congress in relation to patents, it 
may be doubted whether any comfort can come from 



31 
that source, for there are few Senators or Members 
of Congress who have not become aware, by com- 
plaints of constituents, of the evil effects of the ex- 
pansion of patents by Reissue. 

Although the Patent Office may, in some 
instances, be directly responsible for the grant of 
outrageous reissued patents, it would be unjust to 
charge that bureau with the evils resulting from the 
prevailing latitude in acting on this class of cases, 
and the permission given patentees to absorb, by 
reissue, the inventions of others. 

Many expanded reissued patents of doubtful 
character have been sustained by the courts, while 
many others have been slaughtered. 

The treatment of reissued and expanded patents 
by the courts has not been uniform, and in the light 
of apparently conflicting judicial opinions, the Office 
has been unable to draw a well-defined line for the 
guidance of Examiners in their consideration of 
Reissue applications. 

The understanding and opinions of Examiners 
naturally enough differed on the subject, and the 
consequence of all this has been the long continu- 
ance of a system of so-called liberality in the grant 
of reissued patents with enlarged claims. 



32 
The Supreme Court, however, has been gradu- 
ally developing a strong antagonism to such reis- 
sued patents, and has finally taken a stand in the case 
of Miller vs. The Bridgeport Brass Company, which 
cannot be disregarded, but which must necessarily 
result in material changes in the treatment of expanded 
Reissue applications by the Patent Office, and of 
expanded reissued patents by the Circuit courts. 



We can best determine what will be the proba- 
ble results of the action of the Supreme Court in a 
practical point of view by inquiring into the char- 
acter of the evils which have resulted from the 
indiscriminate enlargement of patents by Reissue. 

It is contended 

First. — That the practice has been detrimental 
to the welfare of the public ; has been injurious to 
inventors ; has disturbed the economy of our manu- 
factures, and has tended to enrich men who are 
neither inventors nor producers, at the expense of 
inventors, patentees, manufacturers and the general 
public. 

Second. — That the expansion of patents by 
Reissue has engendered and sustained unwhole- 
some practices in soliciting patents, tending to the 



33 
victimizing of inventors, to lessen the value of 
patent property, and to degrade our patent system. 



THE DISTURBING EFFECT OF THE INDISCRIMINATE 
REISSUING OF PATENTS, ON THE INDUS- 
TRIAL ARTS. 



In discussing subjects relating to patent legis- 
lation and patent practice, we must never lose sight 
of the interests of the public at large, nor fail to 
inquire whether any modifications of the law or 
practice are likely to promote or retard the " pro- 
gress of the useful arts." 

The intimate alliance between patents and the 
advancement of the industrial arts is acknowledged 
in every patent-granting country in the world, and 
any legislation or practice which may tend to weaken 
this alliance, must be prejudicial to the public. Such 
has been the tendency of the distortion of patents 
by Reissue, to misrepresent the intentions of the 
patentee, and to cover ground not contemplated by 
him, and not warranted by the terms of the original 
patents. 



34 

No greater disturbance of the progress of the 
useful arts can be imagined than the sudden appear- 
ance, years after the first grant, of a reissued patent 
having a new meaning, and a more comprehensive 
scope than the original. 

In 1863, the Supreme Court said, in the case 
of Burr vs. Duryee et al. : '' The surrender of valid 
patents and the granting of reissued patents thereon^ 
with expanded or equivocal claims, where the origi- 
nal was clearly neither inoperative nor invalid, and 
whose specification was neither defective nor insuf- 
ficient, is a great abuse of the privilege granted by 
the statute, and productive of great injury to the 
public. This privilege was not given to the patentee 
or his assignees in order that the patent may be ren- 
dered more elastic or expansive, and therefore more 
available for the suppression of all other inventions." 

The same Court, in the decision which we are 
now considering, has said : 

" Patents have been so expanded and idealized 
years after the first issue, that hundreds and thou- 
sands of mechanics and manufacturers, who had just 
reason to suppose that the field of action was open, 
have been obliged to discontinue their employments, 
or to pay an enormous tax for continuing them." 



35 

There are two classes of men on whom the pubHc 
must depend for the progress of the useful arts : 
the inventors, stimulated by wise patent legislation, 
on the one hand ; and on the other hand, the manu- 
facturers, who, by their enterprise and activity, 
render the conceptions of inventors available to the 
public. 

But there is another class of men w^hich con- 
tributes nothing in the way of invention, nothing in 
the way of production, but yet, and mainly on 
the strength of reissued patents, has acquired a dan- 
gerous influence in patent matters, and may be 
said to live at the expense of inventors and manu- 
facturers. 

If the recent decision of the Supreme Court 
tends to put a stop to the doings of these men, the 
inventors and producers can well afford to submit 
to any temporary inconveniences which they them- 
selves may suffer in consequence of the decision. 

Let it be clearly understood who are the men 
we refer to : 

We do not mean the enterprising men who, 
having acquired interests in patents, are willing to 
devote their time, to invest money and induce others 
to invest, in carrying out patented inventions, and 



36 

making them available to the public. These men 
are, perhaps, of all others, the greatest boon to inven- 
tors, for it must be borne in mind that the latter are 
often not endowed with the enterprise, practical skill 
and business capacity, which must be brought to 
bear on the introduction of new inventions. 

We do not mean the manufacturers under 
patents, who, very naturally and very properly, exer- 
cise every effort to place their patents on the most 
secure footing, and who have, in good faith, availed 
themselves of the privilege of reissuing, to that end. 

The men to whom we especially refer (profes- 
sional men and others) are those who, acquiring a 
knowledge, either in the pursuit of their professional 
calling, or by hearsay, of some profitable patented 
manufacture, or process, hunt through the Patent 
Office for some forgotten patent which may have 
the appearance of anticipating those under which 
the manufacturer is prosecuting, in fancied security, 
a successful business, purchase the patent, generally 
for a mere song, and in a round-about way — for any 
supposed interest of the patentee is generally out of 
the question — reissue the patent, and by cunning 
changes of wording and claims, make it cover or 
appear to cover and absorb the patented invention 



37 
which the manufacturer is working. Then follows 
the demand for license fees, or the patent, distorted 
by Reissue to cover ground never contemplated by 
the original inventor, is offered for sale at a high 
price, and is thus, after it has remained in obscurity 
for years, converted into a weapon for harassing 
manufacturers. What is to be done under the cir- 
cumstances ? The manufacturer is threatened with 
a suit for infringing the reissued patent, and often 
the latter is owned by a ring, backed by prominent 
counsel and attorneys ; the victim counts the cost 
and harassment of defending the threatened suit, 
and consents to pay the money demanded; naturally 
he raises the price of his products, the economy of 
the manufacture is disturbed, and the public is taxed 
for the benefit of the non-producing, non-inventing 
speculator. 



It may be well to repeat here what the writer 
said in a little volume"^ first published in 1877, when 
discussions relating to proposed patent legislation 
took place before the Senate Committee on Patents. 

=:= Patents and the Useful Arts, by H. H. 



38 

In that volume we referred to the law relating 
to Reissues as a beneficent measure, which " has 
been grossly abused, and has brought our patent 
system into such disrepute that remedial legislation 
is imperatively demanded." 

" A patent, or series of patents, relating to 
some special branch of industry, has been obtained, 
and capital has been invested in the manufacture of 
the patented articles. Now in these days, the sim- 
plest objects of every-day use cannot be economi- 
cally manufactured without an outlay for machinery 
and appliances, and for carrying into effect a proper 
system of division of labor ; the public demands 
not only new things but better things and cheaper 
things, and this demand can only be supplied by 
patents, and by the capital which patents invite. 
The remarkably cheap products of our workshops 
at the Centennial Exhibition were matters of sur- 
prise and astonishment to our visitors from abroad, 
where labor is much less expensive than in our own 
country." 

** The factory, based on patents, is in full and 
successful operation, the proprietor is receiving a 
fair interest for the capital invested, and the public 
has the benefit of cheaper and better articles in 



39 
return for the protection afforded by the Govern- 
ment in the shape of patents." 

" The success of the estabHshment cannot 
remain a secret, and it attracts the attention of a 
patent speculator, whose first move is to try to get 
hold of some patent preceding those which are 
owned by the proprietors of the establishment. 
Failing in discovering a patent to exactly meet the 
case, he takes an excursion to Washington, proba- 
bly takes the advice of a solicitor there, to whom 
he explains what he wants, and together they go on 
a hunting expedition through the records and 
model halls, until they find some model of a patent 
which they think can be doctored by Reissue to 
resemble a subsequent prominent patent of the 
manufacturer. The model has, perhaps, long since 
been almost forgotten by the inventor himself, and 
has remained on the shelves of the model room 
without attracting any notice. By cunning manoeu- 
vres, the patent to which the model appertains is 
purchased from the owner, perhaps for a mere song, 
and then commences the operation of reissuing; 
the attorney has the copy of the recently discovered 
patent before him, and also a copy of that for the 
coveted machine of the successful manufacturer, 



40 

and he is told that he must reissue the first patent 
so as to cover, or, to use a common phrase, wipe out 
the second." 

" The most ingenious devices are adopted to 
bring this about, — the attorney receives high fees, 
and the Examiner is cajoled by all sorts of asser- 
tions into allowing claims which may appear to be 
innocent enough." 

" The reissued patent is shown to the manu- 
facturer, and he may be induced to purchase it for a 
large sum in order to avoid expensive litigation. 
Now this money is taken from the public to enrich 
the speculator, the non-producer, for, to make up for 
the withdrawal of capital, the price of the product 
is increased. Perhaps the manufacturer resists the 
demand made on him, costly litigation ensues, and 
the public and manufacturer suffer for the benefit of 
the owner of the reissued patent." 

*' The evil wrought by this system is incalcu- 
lable, it not only disturbs the economy of manufac- 
tures, but brings disgrace on the whole patent 
system. A Reissue of this character cannot pro- 
mote the progress of the useful arts, it must neces- 
sarily obstruct that progress." 



4T 

A prominent attorney in his argument before 
the same Senate Committee, in speaking of the evils 
of Reissues obtained by speculators, and after 
instancing a man who has invested largely in the 
manufacture of a patented machine, said : 

" Then comes along what I call one of these 
patent sharks or patent speculators. He goes down 
to the office and rakes that class over with a fine- 
tooth comb to see if he cannot find an old patent 
which can be reissued to cover this successful 
machine. He comes across the old defunct patent, 
and goes and buys it. The owner, of course, is 
glad to get what he spent on it, and he may take a 
hundred dollars for it. Very frequently the man is 
dead, and he will go to the widow or heirs, and 
they will take an3/thing he offers them for it. He 
reissues that patent. Being an ex parte proceeding, 
of course nobody knows anything about it. He 
reissues it just as Judge Grier stated in that hat- 
body case, puts it through the enlarging process, 
not for the purpose of protecting what that patentee 
invented, but for the purpose of covering other inven- 
tions. He has the specifications and claims pre- 
pared with special reference to covering this success- 
ful machine, and when he gets his patent he goes to 



42 

the manufacturer and says, ' You are infringing my 
patent.' The manufacturer examines the matter, 
and it seems to be a clear case. Or he refers it to his 
attorney or counsel, and they examine it, and they 
tell him that they think he is infringing the patent ; 
and then he has either got to pay that man what the 
latter chooses for the privilege of going on with his 
business, or else he has to shut up shop." 

There is an instance of a speculator who for 
years has spent his entire time and exerted all his 
energies in the accumulation of patents relating 
to one of the most extensive industries in the 
country ; he buys them cheaply if he can, and then 
expands by Reissue, or, if he cannot purchase at a 
low price, threatens the patentee with infringement 
until he comes to terms. He has emxissaries in 
different cities engaged to pick up patents which 
can be enlarged by Reissue, and has finally accu- 
mulated a host of patents constituting an intricate 
network of patent property, on the strength of which 
he levies tribute on manufacturers in a dozen States 
of the Union. And it must be remembered that 
the patents thus collected are in many cases so 
shrouded in mystery that the true character of the 
aggregation, plain enough to the owner, cannot be 



43 
determined by others without having expensive 
researches made by accomphshed experts. 

There are scores of instances in which patents 
have been issued, reissued, and re-reissued to keep 
pace with " the progress of the arts as developed by 
time and experience." In many cases a vigorous 
opposition has ended in the slaughter of the patents 
by the courts, but not until they had done infinite 
mischief in the way of harassing manufacturers and 
obstructing the progress of invention. Inventors 
are afraid to exercise their ingenuity in a direction 
which appears to be blockaded by a vague and 
sweeping reissued patent, or interwoven collection 
of such patents. 

Here is one of many instances : 

A patent was granted with a single, modest, 
and harmless claim ; in the branch of industry to 
which it related several valuable improvements were 
made, the patent was reissued to absorb these im- 
provements, again reissued to cover other improve- 
ments, and again reissued, until at last the little 
patent with a specification of 450 words and a sin- 
gle claim was converted into two patents with 8,000 
words and seventeen claims. 



44 

While this process of gradual enlargement was 
going on, the patent was a continual source of 
harassment to manufacturers, until by a combined 
effort it was swept away. 

Hundreds of similar instances could be cited. 

Let us see how the process of reissuing for 
such purposes is usually conducted. 

The attorney has before him the patent to be 
reissued, and copies of the patent or patents, and 
perhaps a drawing of non-patented inventions, all 
of which it is desired to absorb by Reissue. He may 
know, or be morally certain, that his clients never 
contemplated the devices which must be enveloped, 
but he proceeds with his operations. He is actuated 
on the one hand by the desire to include all before 
him, and on the other hand he must be cautious 
about violently wrenching, or appearing to add new 
matter to the patent, lest the Examiner shall dis- 
cover at once the illegal enlargement ; he must 
endeavor to hoodwink that officer. His eye rests 
on a word descriptive of>a certain vital part of the 
invention ; now, he says, if I can only change the 
word here and there, and substitute for it another 
word, the Examiner's mind will become gradually 
and insensibly impressed with the idea of a differ- 



45 
ent thing, and thus the way will be paved for absorb- 
ing claims. Then he sticks in a word or two, or a 
sentence, which, while appearing harmless enough, 
may contribute to the perversion of the patentee's 
original meaning, and so the game goes on, until 
the specification for the Reissue is thus prepared for 
the claims. Then he chuckles at the smartness 
which he has displayed in thus helping one man to 
grab the property of others. The Examiner, of 
course, is kept as much in the dark as possible, and, 
not knowing the true inwardness of the proceeding, 
may pass the case for issue. 

The circulars even of the most incompetent 
men always refer to Reissues as cases demanding 
great ability, of which they have a supply at hand, 
and they generally charge extra fees for such ser- 
vices. 

It may often require great ability to correct an 
honest blunder, and obtain an honest Reissue ; but 
it requires skill, or rather cunning, of another and 
less reputable kind, to do the work we have 
described. 

It is a much easier matter to do this kind of 
tricky work than to prepare an original application 
in such proper and exact form as will insure the full 



46 
protection of an invention, and it very often happens 
that a man who can prepare a fraudulent Reissue is 
not the man to do justice to an original application. 



Remedies for the evils we have described have 
been attempted and suggested from time to time. 
Formerly the owner of the entire interest in a patent 
could reissue it without the knowledge or assent of 
the inventor; but under the Act of 1870, the inven- 
tor, if alive, must make the application. This, how- 
ever, has not been a serious obstacle in the way 
of the speculator, who, by misrepresentations or 
through the intervention of emissaries, frequently 
obtained the desired signatures, while he kept the 
patentee in the dark as to the scope and object of 
the Reissue, although, occasionally, the patentee dis- 
covering the aim of the speculator, insisted upon 
being a participator in the transaction and in the 
prospective profits. 

General Leggett, one of the ablest of our 
Commissioners, said : " In these Reissues more 
deviltry — if I may be permitted to use the phrase — 
creeps into the practice of the Patent Law than 
everything else put together." 



47 

In his report for the year 1871, he suggested, 
as a guard against fraudulent Reissues, that " Section 
53 should be so amended as to require that a notice 
of all such applications for Reissues as seek to enlarge 
the original claim should be published in the Official 
Gazette for at least four weeks previous to the day 
set for examining the same, and that opposition be 
allowed as in extension cases." 

This remedy, excellent in other respects, would 
have entailed an immense amount of additional work 
upon the Patent Office; and for this reason, perhaps, 
it failed to meet the views of our legislators. 

It has also been suggested that there should be 
no Reissue of a patent after it has been in existence 
for more than two years ; a plan which appears to 
accord, in some respects, with the reasoning of the 
recent decision of the Supreme Court. 

In 1876 the writer suggested that, in order to 
lighten the duties of Examiners in acting on Reissues, 
and lessen the chance of fraud on those officers, the 
following rule should be established : 

" Every applicant for a Reissue must file a paper 
setting forth in full and explicit terms wherein con- 
sists the error, inadvertence, or mistake contained in 
the original patent which he desires to correct by 



48 

reissue. If language is introduced which does not 
appear in the original patent, he must state why he 
introduced it, and whether it is based on the model, 
drawing, or specification. If new functions, which 
do not appear to have been contemplated in the 
original patent, are given in the new specification, a 
full explanation will be demanded from the appli- 
cant, tending to show the accuracy of the new 
assertions, and when expanded. claims are asked, he 
must state the ground on which they are based." 

The decision of the Supreme Court may lead to 
the adoption of some such rule as this. 

We do not, of course, pretend to say that all 
reissued patents are of the kind Ave have endeavored 
to describe, but far too many are. 

There is nothing in the decision of the Supreme 
Court to prevent a patentee from correcting a blun- 
dering specification, nor from properly enlarging his 
claims, providing this be done in reasonable time 
after the grant of the patent ; but there is much 
in the decision, which must tend to prevent the 
enlargement of patents for the purpose of absorbing 
inventions not contemplated by the patentee, much 
to show that the days of speculators who, on the 



49 
Strength of reissued patents, with fraudulent 
claims, have preyed upon manufacturers, are num- 
bered. 



THE EVIL EFFECTS OF THE UNRESTRICTED REISSUE 
OF PATENTS IN PATENT OFFICE PRACTICE. 



Another evil of a different character, but of no 
less magnitude, especially as far as the interests 
of inventors are concerned, has been brought 
about by the unrestricted reissuing of patents ; we 
refer to the careless presentation and equally care- 
less prosecution of applications for original patents. 

Facilities for reissuing patents have engendered 
in the minds of inventors a belief that a patent can 
be repaired and re-repaired at any time when it is 
worth while to do so, or when the efforts of others 
suggest a Reissue, and that the style of specifica- 
tion, claims, and drawings, is not matter for grave 
consideration. The very man who would measure 
every word of an agreement, or other document 
relating to ordinary property or money matters, will 
be heedless in the criticism of papers which must 
define his patent property, and in a great measure 
determine its value. 



50 

It has been the commonest thing, moreover, 
for attorneys to suggest to inventors that any 
shortcomings in a specification or claim may be 
corrected by Reissue, when it is worth while to 
resort to that measure, and to advise the accept- 
ance from the office of a patent claiming less than the 
inventor is entitled to, in order to gain time, on the 
ground that the deficiency can be afterward cor- 
rected by Reissue. 



With the view of ascertaining the general 
character of applications for patents as filed in the 
Patent Office, fourteen principal examiners in charge 
of as many divisions were consulted on the subject, 
and readily gave the desired information. Of 
course there was a variation in the estimates, owing 
mainly to the fact that in some divisions the inven- 
tions examined are of a more complex and elaborate 
character than in others. 

It was found that, on an average, 14 per cent, 
of the applications were prepared in a masterly, 
first-rate manner, different examiners using the 
different terms as applied to the preparation of both 
specifications and drawings ; that 26 per cent, were 
fair to medium, 30 per cent, passable to poor, and 



5' 

that the remaining 30 per cent, were very bad 
or butchered. 

The estimate may appear to the casual reader 
to be ilHberal and ahiiost incredible, but there are 
two classes of men who know that it is a fair one, 
inclining to the side of liberality. These men are 
examiners of the Patent Office, who furnished the 
information on which the estimate is based, and the 
professional men who report on the validity of patents, 
and whose reports are accepted by manufacturers 
and those interested in patent property, and whose 
occupation demands the constant perusal and criti- 
cism of patents. 

Let any man of the most ordinary literary 
attainments take a batch of copies of patents, peruse 
them carefully, and he will be astonished at the 
want even of common schooling displayed in the 
composition of many of the specifications. 

It cannot be doubted by any one experienced 
in patent matters that this state of affairs is in a 
great measure due to the supposed facilities for 
repairing damages by Reissue. 



The following questions will naturally occur to 
the reader who is not familiar with the subject : 



52 

First. — How can the men who do this kind of 
reckless and clumsy work continue to transact 
business ? 

Second. — How can the Patent Office authorities 
entertain such work, and permit inventors to be 
victimized ? 

The first of these questions can be readily 
answered by saying that the most worthless nos- 
trums can be foisted on the public as life-saving 
medicines, by wholesale advertising. 

As it is not always an easy matter for the wisest 
men to determine in advance the value of professional 
services of any kind, it is not much to be wondered 
at that inventors scattered over the country should 
be misled by the circulars and apparently liberal 
terms of incompetent patent attorneys. 

The second question will demand a more 
elaborate answer. 

The principal duty of an Examiner is to 
determine whether an invention claimed by an 
applicant for a patent is new. 

With copies of United States and Foreign 
patents, and technical works before him, he proceeds 
to make the necessary search, the result of which 
will determine his action in the case. 



53 

But there is another duty which the Examiner 
has first to perform: he must determine whether 
the appHcation is in all respects in proper form ; 
that is to say, he must ascertain whether the for- 
malities required by the rules have been complied 
with, and he may further demand the amendment 
and revision of the specification for the purpose of 
correcting inaccuracies of description, or unnecessary 
prolixity, and securing correspondence between the 
claim and the other parts of the specification. He 
must also determine whether a drawing or drawings 
submitted with an application fully illustrate the 
invention. 

But an Exammer camiot ijiform an inventor 
that /lis attorney has claimed less for him than he is 
entitled to ; he will take care that an applicant does 
not obtain more than he is entitled to, but it is not 
the business of the Examiner to advise the applicant 
or his attorney, that more might be claimed. 

It is a reasonable presumption, upon which the 
Examiner must proceed, that the applicant has 
taken care to claim all that, in view of the prior 
state of the art as known to him, he believes him- 
self entitled to claim. 



54 

The Examiner practically depends for his 
knowledge of the prior state of the art entirely upon 
the Patent Office Records of prior patents and 
printed publications ; but it may very well be, and 
no doubt often is so, that things have been in public 
use, and known to the applicant, which have not 
been patented, nor described in print, and are there- . 
fore not known to the Examiner, hence that officer 
must assume that a limited claim, where such an one 
is originally presented, is due to the kiwzvledge, not 
to the ignorance^ of the applicant. 

There are twenty-five principal Examiners, 
twenty-four first assistant Examiners, twenty-four 
second assistant Examiners, and twenty-four third 
assistant Examiners, in all ninety-seven men, who, 
aided by numerous clerks, are engaged in the ex- 
amination of applications for patents. 

No men in the Government service are harder 
worked than these officers; it would be impossible 
for them to accomplish the duties they perform in 
the absence of the admirable classification of refer- 
ences which they have at hand. 

An Examiner can tell when a specification is 
meagre, he may be certain that justice has not been 
done to the inventor, he knows when the composi- 



55 
tion and arrangement of a specification are bad, and 
may suspect that too little is claimed, but if his 
duties extended to the notifying of the applicant 
that justice had not been done to his case, it would 
require double the force of Examiners now employed 
to perform the duties. 

Too many applications indicate the want of a 
schoolmaster, but the time of an Examiner is too 
fully consumed in the performance of legitimate 
duties to saddle upon him the functions of a peda- 
gogue. 

The general practice is to accept the descrip- 
tion found in an application, if the Examiner thinks 
it intelligible, no matter how clumsily it may be 
drawn, 'and hence it is that such a host of stupidly 
framed patents escape from the office; and it is 
better, perhaps, that this should be the case than 
that arbitrary powers, inconsistent with our insti- 
tutions, should be placed in the hands of any Gov- 
ernment officers. 

Of course if there is any gross error in a speci- 
fication, any statement which is palpably absurd, or 
if the specification is too badly drawn to be under- 
stood, it is the duty of the Examiner to insist upon 
corrections. 



56 

It is not his duty, however, to correct errors 
in the specification, he can point them out, and 
the apphcant or his attorney must correct them. 
Much of the time of Examiners is consumed in 
thus setting butchered cases to rights; and some- 
times an Examiner, either to save time, or out of 
good-nature, will suggest what amendments should 
be made, when he has to deal with a stupid attorney. 

Naturally, incompetent attorneys and inex- 
perienced invento'rs, presenting their own cases, 
are restive under the demands by Examiners for 
amended descriptions ; these are the men who 
attribute to Examiners all sorts of motives, prejudice, 
ignorance, etc., while they are, of course, blind to 
their own shortcomings. 

Here is one of many instances: A specification 
was presented to the Office in which two or three 
palpable blunders, stupid errors, occurred on every 
page, and in which the description was absurdly defec- 
tive in many particulars ; time was consumed in 
correspondence with the attorney until he took um- 
brage, and made a formal complaint against the 
Examiner to the Commissioner. That officer's 
opinion concluded as follows : " It appears to me that 
the time of the Office has already been consumed in 



57 • ■ 

attending to errors and imperfections in your specifi- 
cation which ordinary skill and intelligence on the 
part of the attorney would have avoided, and that 
complaints so manifestly trivial and causeless should 
not be made occasion for any further useless labor." 

Let us briefly describe a common mode of 
conducting patent business : 

An inventor attracted by the cheap terms 
offered in one of hundreds of circulars which are 
scattered broadcast over the country, sends a 
description or perhaps a model of his invention to 
the attorney; the latter gets a drawing made for a 
trifle, scribbles out something which he calls a 
specification, or employs some one else to do it, 
the specification generally concluding with com- 
paratively broad claims. The papers are sent to 
the client, to whom the claims appear attractive; the 
application is filed, and in due time rejected. With- 
out consulting with his client, or showing him the 
references on which the rejection is based, the 
attorney proceeds to cut down the claims until a 
patent is allowed, and when the inventor receives 
the deed he finds it nothing but a shadow. 

The patent may be worthless because the 
miserable claim is all that the inventor was entitled 



58 

to (and this only shows that he did not receive 
proper advice in the first instance) or because the 
claim is much less than he is entitled to. 

Sometimes a specification is scribbled out by 
an attorney, and the case handed over to a so-called 
associate, who even without consultation with his 
principal, and often for a miserable pittance, proceeds 
to do what he likes with the specification by 
amendment, introduces damag-ingr matter, and cuts 
down the claims, etc., with the view of getting any 
kind of patent in the shortest time, so as to earn his 
pay. 

It is scarcely necessary to remark that the evils 
of this clumsy practice are aggravated in cases where 
the attorney works on the contingent-fee or no patent, 
no pay — system. 

Let us look for a moment at the bargain 
involved in this kind of practice. The attorney 
receives the executed specification from his client, 
together with a small fee in advance, and practically, 
if not actually, says to the latter, you have nothing 
more to do until the patent is allowed ; I shall not 
bother you about rejections which may be received. 
I reserve to myself the right of cutting down the 
claims, and mutilating the specification to any extent 



59 
I deem proper. You have nothing to do with the 
kind of patent I obtain for you, but when a patent is 
allowed you must send me my fees and the Govern- 
ment fees, before you can get the deed. 

The whole transaction is simply preposterous, 
and any Examiner can tell us that a very large pro- 
portion of butchered applications is due to this per- 
nicious practice. 

It has been urged that this mode of procedure 
and cheap terms are demanded by poor inventors, 
but it is not seen how the latter can be benefited by 
bad patents. 

It has also been urged, with much truth, by the 
contingent-fee men, that there are attorneys having 
no fixed {^^^, and possessed of more cunning than 
brains, who make extortionate charges for small 
services, but one bad practice is no excuse for 
another. 

To return to the applicant who has received a 
shadowy, worthless patent — he sometimes discovers 
the fact that his invention is not properly covered, 
and he resorts to the process of reissuing. What is 
to become of the patentee in the future under the new 
rulings suggested by the decision of the Supreme 
Court? Will the Patent Office and the courts look 



6o 

upon the proceedings we have described above as 
an inadvertence, accident, or mistake of the inventor, 
which may be remedied by Reissue? or will they be 
considered errors of judgment, for which the patentee 
alone is responsible? 



Let us say a parting word concerning ]£x- 
aminers. 

There are doubtless among them a few who 
could be better employed in some other capacity, but 
if all attorneys did their work as conscientiously and 
intelligently as the Examiners do, there would be 
fewer complaints about the administration of the 
affairs of the Patent Office, and a diminution of the 
public disregard of inventors, patents, and patent 
property. 

It is the almost invariable practice of reckless 
and incompetent attorneys to saddle upon Examiners 
their own shortcomings ; they indulge in a running 
abuse of these officers in their letters to clients. 
Hence more or less of a prejudice has been created 
against Examiners, who unfortunately cannot reply 
to the charges, or explain to the public how the dif- 
ficulties, of which inventors complain, are due mainly 
to the shortcomings of worthless practitioners. 



6i 

The following occurs in the decision of the 
Supreme Court: 

"Those who have any experience of business 
at the Patent Office know the fact that the con- 
stant struggle between the office and applicants for 
patents has reference to the claim. The patentee 
seeks the broadest claim he can get. The office on 
behalf of the public is obliged to resist the constant 
pressure." 

The applicant of course desires the broadest 
claim he can get, but it is a notorious fact that 
many attorneys will accept any kind of a claim in 
order to secure a patent, regardless of the wishes of, 
and without consulting, the inventor. Very much 
of the contention which arises in the Patent Office, 
and the greater portion of the complaints against 
Examiners, have their origin in attorneys who don't 
know how to claim what their clients are justly 
entitled to, or who ask for that which they know 
well enough they have no right to. 

A competent man wishing to deal fairly with 
his client and the office, will often take a firm stand 
when nice questions arise in the prosecution of an 
application, and he will struggle (if the term may 
be used) to maintain the stand he has taken on 



62 

behalf of his client, but this struggle will be one 
involving the expenditure of brains, and will be con- 
ducted without acrimony. These are the men who 
command the respect of the Office. 

We have heard of attorneys who are afraid to 
run counter to the opinions of Examiners, lest such 
a proceeding might create in the mind of the officer 
a prejudice against them; and there are others who 
advise their clients that they had better accept, 
without discussion, all that an Examiner may be 
willing to give in the shape of a claim, lest other- 
wise they get nothing. These men had better go 
into some other business, in which a yielding dis- 
position is a desideratum. 

Examiners as a body are ready enough to yield 
to conviction; and where questions arise, con- 
cerning which there may well be two opinions, the 
competent attorney who struggles to enforce his 
views, intelligently and fairly, without resorting to 
the tricks and misrepresentations which are far too 
common, will command more respect in the Patent 
Office than the man whose too prompt submission 
may endanger his client's interests. 

There are occasional instances in which the 
action of an Examiner savors of injustice, but these 



63 
cases are so few, and the remedies so prompt, that 
it is hardly worth while to refer to the subject. 



Specifications of applications for patents are 
presented to the Office in a variety of forms. 

There is the document which displays an in- 
vention in shadowy outline, and in which the vital 
points are obscured by vapid generalities. 

There is the specification which exhibits a 
want of common schooling. 

Here is an example in a copy of a patent 
which is incidentally before the writer, and in which 
the attorney refers to ''a stud or spur which is 
adapted to pierce the bottom of a tree or other- 
wise',' and to objects as "assuming a somewhat hor- 
izontal position." Such absurdities are of quite 
common occurrence. 

There is the oratorical and sententious docu- 
ment of the man who " addresses himself to the 
intelligence of the mechanics employed to con- 
struct," etc., who introduces claims of twenty to 
twenty-five lines for things which could be better 
covered by claims of four or five lines, and whose 
specifications are inflated, either because he can write 



64 

in no other way, or because, with an eye to his 
client's pocket, he wants to impress him with the 
importance of his services in preparing the swollen 
document. 

It is a pity that the rule relating to unne- 
cessary prolixity could not be more frequently 
enforced against this sort of nuisance. 

There is the crooked, vague and disconnected 
style of specification, which of all others is dreaded 
by Examiners, owing to the difficulty of determin- 
ing what the thing is all about, and what exactly 
the inventor is driving at. 

There is the intensely legal style, which can 
well be spared for one based more on technical than 
legal knowledge. 

There is the specification especially prepared 
in advance for the subsequent Reissue of the patent. 
Vague remarks are introduced here and there, sen- 
tences to which no special meaning can be attached, 
but which may be translated into meaning more 
than the applicant or even his attorney intended, in 
the first instance, when the time comes to absorb 
the subsequent inventions of others. 

There is the painfully minute and stilted style 
of the man, who, in his anxious chase after insignifi- 



65 

cant nuts, bolts, and other every-day appliances 
found in every machine, generally forgets, or is 
entirely ignorant of, the essence of the machine and 
the prominent features of the invention. This kind 
of man is very often the loudest in boasting of the 
superior style and execution of his specification. 

We should not forget the cases in which 
claims are piled up in the style of the house that 
Jack built, generally adopted by men who would 
palm off on their clients this kind of stuffing as 
a formidable protection, or by men who will not 
take the time, or who have not the ability, to get 
at the heart of an invention. 

Finally, there is the specification prepared by a 
master of the art, — a clear, continuous, concise and 
precise document prepared with care and fore- 
sight; nothing is omitted which may put the 
invention in the best possible light, there are no 
ambiguous words or sentences, no displays of fine 
writing and big words, which are often the best 
proofs of ignorance, but there is a description 
which goes to the heart of the invention, and con- 
cludes with brief, well-digested, claims. 

Correspondence with the Patent Office in pros- 
ecuting applications for patents is in varied styles ; 



66 

the supplicating letter urging the Examiner to allow 
the very narrow claim presented in the amendment; 
the angry and sometimes insolent letter of the man 
who looks upon every adverse action of the Exami- 
ner as a personal affront ; the muddy argument in 
support of a claim which should never be allowed ; 
the inflated argument, full of legal bombast, " logi- 
cal conclusions," references to decisions, etc., all 
meant perhaps for the eyes of an admiring client, 
and which an Examiner never reads because he 
knows all about it in advance. 

Finally there is the letter which goes straight 
and briefly to the point. 

All sorts of men from all conditions of life 
enter the profession, — the unfledged errand boy, the 
country scrivener, the briefless young lawyer, who 
prates about his knowledge of mechanics, without 
knowing the meaning of the term, the illiterate 
workman who has an idea that the ability to skill- 
fully wield an axe or saw, fits him especially for the 
duty, the ex-tradesman, the draughtsman, whose lim- 
ited education incapacitates him for the duties he 
assumes, the college professor, the educated mechanic, 
who has a practical knowledge of the industrial arts, 
and who of all others is the best man for the purpose. 



^7 
and the man who has been content to receive a 
proper training in the profession. We should not 
forget the ex-officers of the Patent Office ; many of 
these gentlemen are ornaments to the profession, and 
they themselves will tell us that there are attorneys, 
who have been formerly employed in the Patent 
Office, who are not to be relied upon, and this will 
be promptly endorsed by Examiners, 

If well-educated young men would not think it 
beneath their dignity to take a practical course of 
two or three years in a machine-shop, or the law 
student, after receiving the title of attorney-at-law, 
which he obtained by such a slight effort, would 
have the courage to become a student in practical 
and theoretical matters relating to the industrial arts, 
(and he would find this a much more absorbing and 
time-consuming pursuit than that by which he 
attained his title), there would be no lack of the 
right sort of men to assume the position of patent 
solicitors. 

Such are the men who, if the decision of the 
Supreme Court leads, as it should do, to greater care 
and circumspection on the part of inventors in 
applying for their patents, must in the future take 
the place of the many incompetents, who are a nui- 



68 

sance to the authorities of the Patent Office, and a 
curse to inventors. 

The circulars issued broadcast by these incompe- 
tents are very similar in character, for one is generally 
copied from another. In one respect they all agree 
exactly : every man states in his circular that the 
practice of soliciting patents is a very intricate one, 
and that he is the man endowed above all others 
with the skill and experience to tackle intricate 
cases, and especially to look after Reissues. 

There are reasonably modest circulars, and others 
characterized by boastful assumptions of superiority. 
We have seen pamphlets, claiming for their authors 
an accurate knowledge of almost every science and 
every art known to man ; an amazing list of accom- 
plishments, calculated to take away the breath of 
unsophisticated readers. 

These men remind one of Goldsmith's Village 
Schoolmaster, whose acquirements were the pride and 
admiration of his rustic constituents, who wondered — 

"And still the wonder grew, 
That one small head could carry all he knew." 

But in some, at least, of these cases, the mys- 
tery is susceptible of explanation in a way varying 
with the temperament of the reader ; for the man who 



69 

thus undertakes to pose as a new and greater Admi- 
rable Crichton, will probably exhibit an astounding 
ignorance of, or most heroic contempt for, the plain- 
est and best known rules of English grammar. 

Advertising is of course resorted to extensively, 
and advertisements are of all kinds, from the quiet, 
business-like style to the bombastic self-assertive 
kind. 

Sometimes the Vincent Crummies kind of 
advertising is adopted, — the well-known plan ot 
introducing small puffs amidst the news or variety 
columns of local papers, something in this order : 
" We understand that the well-kno^^ll patent solicitor, 

Mr. , is a practical mechanic," etc., or like 

this, " Inventors who have a regard for the solidity 
of their patents are extensively patronizing Mr. 



It is a notorious fact that the country is flooded 
with worthless patents, and this is charged to the 
authorities of the Patent Office. 

The truth of the matter is this : An inventor 
through an attorney applies for a patent, the appli- 
cation is rejected in view of two or three prior 
patents, the attorney sets about to alter the claims 



yo 

with the view of avoiding the references, ii 
cases out of ten without consulting his chent or even 
showing him the references ; the claim is restricted by 
adding new elementary parts to it, until it is finally so 
swollen with a number of elements combined that 
the Examiner cannot find a reference to meet the 
exact terms. The miserable combination is new, 
and so the patent is allowed, after the inventor has 
been made to say, unwittingly, I do not claim this, 
and I do not claim that, but I claim the following 
very restricted combination, and the result is a patent 
which is not worth the paper it is written upon. 

Is the Office to blame for all this ? The 
present practice of the Office must be adhered to, 
there is only one way of departing from it, and that 
is by placing in the hands of Examiners an arbitrary 
authority which could never be tolerated. / 

An Examiner may know well enough that a 
patent issued under his direction is worthless, but 
he cannot so indorse that patent as to indicate its 
weakness ; he has done all he can do to indicate to 
the public the true character of the instrument by 
compelling the applicant to admit the prior state of 
the art and restrict the claims. 



71 

The Patent Office is attacked from all direc- 
tions, and sometimes from curious standpoints. 
Patentees, for instance, often complain because 
improvements on their inventions are patented to 
others. They are ignorant of the fact, first, that per- 
fection can rarely be approached, much less reached, 
without a succession of improvements, made by 
different inventors ; and, second, that patents for 
improvements are very often the most profitable, 
both to the improver and the patentee of the inven- 
tion on which the improvement is based. 

A writer on this subject* puts the matter very 
forcibly in this way : 

" Elias Howe was, presumedly, the first inven- 
tor of an operative sewing machine which formed 
stitches by the conjoint operation of a grooved and 
eye-pointed needle and a shuttle. 

" Now, although Howe's machine undoubtedly 
did sew, it never was a practically successful machine ; 
and, had it been left entirely to the unstimulated 
genius of the original inventor, it probably never 
would have been, and the present sewing machine 
industry might still be slumbering in its cradle." 

* Examiner H. Calver in the Sewing Machine Journal, July i, 1881. 



72 

Attacks against the Patent Office come from 
another source. There are thousands of patentees 
who beheve that the deeds which they receive give 
them full liberty to manufacture, use and sell their 
inventions, regardless of the rights of prior inven- 
tors, on whose patents their own inventions may be 
based. From time to time, these men discover, 
perhaps after incurring many expenses, that they 
must pay tribute to, or settle with, prior patentees. 
They become indignant, and want to know why the 
Patent Office issued such patents. 

Many and serious losses are incurred by paten- 
tees through their ignorance of the true scope of 
their patents ; and this prevailing ignorance may be 
attributed mainly to the want of candor on the part 
of the attorneys employed. 

There are very few attorneys who will write to a 
client thus : " Enclosed is an official notice of allow- 
ance of patent for , with copy of claims, 

which are the best that could be obtained. In view 

of the reference to patent No. , cited by the 

Examiner, you are advised to make arrangements 
with this patentee before incurring expenses in 
manufacturing," etc. 



73 

The average letters are • of the very opposite 
kind, are sent without any copies of the claims, and 
are often replete with self-laudation and vain- 
glorious* assertions as to the efforts the writers had 
to exert to " squeeze the patent out of an Exam- 
iner ; " whereas all the efforts, perhaps, consisted in 
cutting down the claim to a minimum. Sometimes 
these effusions are accompanied with demands for 
extra fees for extra services, or for getting out of 
difficulties, which are most frequently of the attor- 
ney's own creation. 

All this sort of thing has tended to create 
more or less of a prejudice against the Patent 
Office. 

Why do not the authorities of the Patent Office, 
it may be said, caution inventors about employing 
incompetent attorneys ? 

This has been attempted several times, but the 
effort has been of no avail. 

As far back as 1855, Commissioner Mason 
deemed it necessary to post in the Patent Office 
printed cautions to inventors to beware of pettifog- 
gers. In about three days after the appearance of 

* Commissioner Fisher's Report for 1869. 



74 
the notice, it was reproduced at the head of the cir- 
cular of the very man of all others against whom it 
was chiefly directed. 

Commissioner Fisher published in his report 
for 1869, and in his usual vigorous style, a caution 
against employing incompetent solicitors, and those 
who had adopted the contingent-fee system. It 
was of but little avail, for solicitors of all sorts 
interlarded their circulars with quotations from 
Commissioner Fisher's remarks. It was the same 
in the time of Commissioner Spear, who repeated the 
caution in very urgent terms. 

A man who has failed to make headway in other 
pursuits, and suddenly decides to become a patent 
solicitor, no matter whether he has the slightest 
capacity or experience for the position or not, 
always introduces in his circular as the main 
features, quotations from the tirades of Commis- 
sioners Fisher and Spear against incompetent and 
inexperienced attorneys. 

It may be that there are no more impostors in 
the profession of soliciting patents than in any other 
profession, but we know that any incompetent 
person, without diploma or certificate, can declare 
himself to be a patent solicitor, issue circulars, 



75 
delude inventors and the public, and become a 
nuisance to the Patent Office. 

The immense amount of damage done by these 
men is incalculable ; they have for years thrust their 
valueless services on unwary inventors ; they have 
for years been a source of annoyance to the officers 
of the Patent Office, have done more than all other 
evils combined to reduce the value of patent prop- 
erty, and to bring disgrace on a profession to which 
talents of the highest order should be devoted. 
Fortunately, that profession also counts among its 
members men who command the respect alike of 
inventors and the authorities of the Patent Office ; 
high-toned, educated, and conscientious men, who 
have prevented the degradation of the profession to 
the level of petty claim agencies and lottery broking. 
Let us suppose for a moment that inventors 
had been taught from the first to look upon the pre- 
sentation of their applications to the Patent Office, 
as one of the serious affairs of life ; to know that 
the same care should be devoted to the preparation 
of the papers as to the framing of a will or other 
document relating to ordinary property ; that there 
would be no opportunity of amending their patents, 
excepting the amendment were made promptly; that 



76 

claims could not be enlarged ; suppose, in brief, 
that the doctrine set forth in the decision of the 
Supreme Court had prevailed from the early days 
of our patent system, and that the law relating to 
Reissues had been interpreted as it has now been 
interpreted ; is it reasonable to suppose that the ^evils 
described would have existed to anything like so 
great an extent, or that we should have such a num- 
ber of incompetent men existing as blots on a pro- 
fession ? 

It is not difficult to foresee that the decision of 
the Supreme Court must eventually result in teach- 
ing inventors that shabby documents and the reck- 
less prosecution of applications will not serve their 
interests ; and then the crowd of incompetent so- 
called attorneys, who have for so many years been 
imposing on inventors, must be dispersed; and a 
more wholesome practice must take the place of 
that which has been a curse to our patent system, 
and has called for the animadversions of the 
Supreme Court. 

The following warning to inventors, given 
in the little volume previously referred to,* may 



* Patents and the Useful Arts, by H. H. 



11 

not form an inappropriate conclusion to this 
chapter : 

" Inventors may save themselves from tile many pitfalls 
which beset them as patentees, and may acquire much 
salutary information, by observing the following instruc- 
tions : 

" Never sign blank petitions for applications for patents ; 
insist upon examining the specification and drawings before 
the application is signed and filed, noting especially the 
character of the claims. You may be told that you cannot 
understand them; but you have at least a right to tiy and 
understand them, and if you cannot, your attorney ought to 
explain them. Keep a copy of the specification, or at least 
of the claims ; and bear in mind that the protection you 
acquire by a patent will depend upon the claims which are 
allowed. If you ask the government for less protection 
than you are entitled to, the officers of the government can- 
not undertake to notify you that you have not done yourself 
justice ; they will take care that you do not get more than 
you are entitled to, but it is your own fault if you ask for 
less. After your application is filed, insist upon knowing 
every step taken in the prosecution of the case. If the 
application is rejected, in view of prior patents, insist upon 
having a copy of the official letter and particulars of the 
prior patents referred to, and of such changes as the attor- 
ney proposes to make ; you have a right to an opinion of 
your own as to the character of the references, which may 
not have the bearing on 3^our case which the Examiner or 
even the attorney supposes. Bear in mind that the prose- 
cution of the case, after rejection, is the most important 
duty of all, for any neglect might result in the granting of a 
patent with narrower claims than you are entitled to. When 
the case is allowed, insist upon having a copy of (he allowed 
claims, which, with the copy of the originals, and of letters 



78 

of rejection and references, will give you a pretty clear idea 
of the kind of patent you will receive on the payment of 
the second fees, and you will have acquired some informa- 
tion of the character of patent property generally, as well 
as of your own patent property in particular. 

" No respectable attorney can refuse to comply with 
such demands as we have mentioned; indeed, the practice is 
adopted to a greater or less extent in all our cities ; it is a 
practice which experienced inventors and those who have 
most at stake in patent property insist upon, and it is a 
practice which can be carried out with comparatively slight 
effort, — it is an honest and wholesome practice." 



HOW THE DECISION WILL AFFECT INVENTORS AND 

PATENTEES. 



Of course, there can be no sudden alteration 
in patent practice, such as that which is fore- 
shadowed in the decision of the Supreme Court, 
without disturbing influences tending to work injury 
to some of those who are interested in patents. 

Let us see, in the first place, what the effect of 
the change will be on inventors and patentees. 

There are hosts of original (not reissued) patents 
which, as before remarked, are worthless, because the 
inventions to which they relate are worthless. The 
status of these patents cannot be injured by the 
change of practice. 



79 

Then there are numbers of patents for really 
useful and practical things, but which involve very 
little invention, in view of prior patents, and which 
cover so little ground, that the interests of the pat- 
entees and assignees cannot be jeopardized by the 
change. 

There are ver)^ many defective patents which 
relate to inventions of more or less value, but which 
have not been fully described, or claimed in proper 
terms: patents, in fact, which, owing to stupid or 
reckless attorneys, do not cover the invention. 

It may be said that many of these defective pat- 
ents are due to the carelessness or ignorance of 
inventors themselves, in not getting the help of good 
attorneys to draw their papers. 

During the previously mentioned discussion 
before the Senate Committee on Patents, a patent 
lawyer of prominence made the following remarks : 

" The specification of a patent, which is pub- 
lished as a part of the patent, forms a part of the 
contract between the patentee and the public — by 
the public, on the one hand, that he shall have a 
monopoly of what he discloses, for a certain term, 
and by the patentee, on the other hand, that he will 
disclose then and there all that he claims, so that 



8o 

the public may not be misled by false lights; and if 
he suffers hardship on account of the ignorance or 
incapacity of the attorney whom he employs, he 
suffers but the same hardship which every contract- 
ing party suffers who has a contract unskillfully 
drawn by reason of employing incompetent attor- 
neys." 

But it must be remembered that the practice of 
the Patent Office, based on decisions of the Courts, 
has induced every patentee to believe that he can 
change and re-change the contract he has entered 
into with the public at any time by the process of 
reissuing, and this belief, as before remarked, has 
induced carelessness on the part of inventors as to 
the selection of attorneys. 

We venture to say that there is hardly a patentee 
in the land who has not been thus induced to look 
upon a patent as a thing which can be altered and 
modified whenever he thinks it worth while to do 
so, or whenever a hungry attorney persuades him to 
resort to that expanding operation. 

Instances of hardships must necessarily occur 
under the new rulings. 

An inventor may have a patent which has been 
in his possession for several years. It may have 



8i 

been acknowledged by manufacturers, and license 
fees may have been paid. Another manufacturer, 
too mean to pay for the required license, and having 
ascertained the weak points of the patent, proceeds 
to infringe. The indignant inventor commences suit, 
only to find that the patent cannot be sustained, that 
the claims do not cover the invention. 

Should the Patent Office, acting in accordance 
with the opinion of the Supreme Court, refuse to 
grant the Reissue because there has been unreason- 
able delay, or because the claims have been unduly 
expanded, the patentee will be in a helpless condi- 
tion. 

If the Patent Office grants the Reissue, the 
Courts may say that it should not have been granted. 
This would be a case of great hardship. 

Apropos of patent suits, let us here refer to a 
practice as detrimental in its way to the interests of 
inventors and owners of patents as that we have 
described ; that is, the hurried commencement of 
suits without first determining the true status of the 
patents on which the suits are based. 

The loss of money to inventors, and owners of 
patent property, from this source cannot be calcu- 
lated. 



82 

The evil is mainly due to the advice of lawyers 
who know so little about patent business that they 
recommend legal proceedings, before inquiring, and 
without knowing how to inquire, into the actual 
condition of the patents, and especially to young 
lawyers who do not understand the true meaning of 
a patent, have had no teaching or practice in patent 
cases, and cannot tell the difference between a power 
loom and a spinning machine, and think that the title 
of attorney-at-law, which they have acquired with 
so little trouble, gives them a license to bleed the 
unwary patentee. 

It would be well if some remedy could be pro- 
vided against this evil. 

But to return to the occasional hardships which 
inventors may suffer under such change of practice as 
the Supreme Court decision foreshadows, it must be 
remembered that under this practice every patentee 
can correct his patent, and even expand his claims by 
Reissue, providing this be done in reasonable time ; 
the decision is directed against Reissues framed, long 
after the grant of the original patent, to absorb inven- 
tions which the patentee never contemplated. 

Patentees, moreover, must remember that the 
Courts interpret patents liberally, and will always 



83 

lean to the side of the inventor if he has made an 
improvement of value. It was the late Judge Grier 
who said, "When there is a real invention we have 
done violence to our own conscience in sustaining 
a patent drawn by some blockhead." 

This liberality, tliis leaning towards the inge- 
nious inventor, will certainly not diminish when 
the practice suggested by the Supreme Court has 
restricted the Reissue of patents. 

It has been urged in favor of what is termed 
liberality in reissuing patents, that it serves to pro- 
tect real inventors from the machinations of adapters 
and copyists. 

It is admitted, in the first place, that these 
copyists are as great a curse to real inventors as are 
incompetent advisers ; but inventors are not the 
only originators who are harassed by pirates. Origi- 
nators are the few; adapters and plagiarists the many; 
and there is a general propensity, a tendency of 
human nature, to begrudge the credit of originality, 
where the work of the brains is involved. 

The author, the composer, the architect, the 
artist, the orator, all are afflicted with the doings of 
those who would steal the brains of others, and 
appropriate ideas which they could never originate. 



84 

The law provides for the protection of inven- 
tors, perhaps a better protection than is afforded to 
' any other originators, and they have only to take 
proper care in securing that protection, to be as free 
as men can be from the attacks of creatures, whose 
want of originality is compensated for by great 
absorbent power and cunning. 

Adapters who cannot originate, have been in 
the habit of obtaining patents for undeveloped 
things which they misname inventions, and quietly 
waiting until some meritorious and practical inventor, 
in the same line, appears, and then distorting their 
own crude ideas into a counterfeit resemblance of 
the practical reality, which they had not the brains 
to achieve. 

Patentees are not armed, but rather disarmed, 
against these pirates by the loose practice of reissu- 
ing which has prevailed for many years. 

Hardships other than those we have mentioned 
may follow the adoption of a new practice; but 
when we remember that facilities will be afforded 
for the prompt and honest correction of honest 
blunders, and that new avenues will be opened for 
the exercise of ingenuity, which have hitherto been 
blockaded by fraudulent reissues in the hands of 



85 
speculators, and especially when we remember that 
the decision of the Supreme Court must be a lesson 
soon learned in an intelligent community, the ulti- 
mate advantage to inventors must far outweigh any 
evils or inconveniences which can be suggested 
by those who advocate the continuance of the old 
system. 



HOW THE DECISION WILL AFFECT MANUFACTURERS 
UNDER REISSUED PATENTS. 

A long residence in this large manufacturing 
city enables the writer to say that although our in- 
dustries are to large extent based on patents, and very 
many owe their origin to patents, the proportion of 
reissued patents on which our manufacturers rely is 
very small indeed compared with the number of 
original patents. 

The most dangerous and fraudulent refssues 
are not in the hands of manufacturers, but in the 
possession of men and formidable corporations, who 
have grown rich on the brains of others, and who 
tax manufacturers for every description of material 
and labor-saving appliances, and disturb the 
economv of manufactures. Manufacturers would 
readily forget temporary inconveniences, which 



86 

might be due to a change of practice, if that change 
swept away those unjust reissues. 

Many of the existing reissued patents are harm- 
less; many are honest reissues; many might be 
improved by reissuing them back to their original 
condition, for there has been in the minds of 
patentees a sort of charm about a reissued patent, 
and they have been in many cases persuaded to 
reissue when they had nothing to gain from it. 

The reissued patents, which are and have long 
been a curse to the community, are those manufac- 
tured out .of originals, by a process of distortion, 
misrepresentation and expansion to include things 
which the original inventor never contemplated. 

The Supreme Court has declared that this sort 
of thing must stop, and has pointed out what prom- 
ises to be an effectual way of bringing about that 
desirable consumimation. 

The check placed upon expansions of claim by 
Reissue, by attaching as a requisite to validity the 
condition that the right shall have been promptly 
exercised, before adverse rights have arisen — rec- 
ommends itself as reasonable, equitable and condu- 
cive to the good of true inventors and honest 
patentees. 



APPENDIX. 



J. E. AMBROSE LAMP. 



No. 30,381, 



Patented October 16, i860. 




Fi^. /. 



Appendix. 



Specification of Original Patent of 
J. E. Ambrose, October 16, 1860. 

To all whom it may concern : 

Be it known that I, J. E. Ambrose of Batavia, in the 
county of Kane, and State of Illinois, have invented a new 
and improved lamp ; and I do hereby declare that the fol- 
lowing is a full, clear and exact description of the same, 
reference being had to the annexed drawings forming part 
of this specification, in which 

Fig. I is a vertical central section of my invention 
taken in the line x x. Figure 2. 

Fig. 2, a plan or top view of ditto. 

Fig. 3, a plan or top view of ditto, with the heaters 
detached. 

Fig. 4, a detached plan or top view of the wick-adjust- 
ing mechanism. 

Similar letters of reference indicate corresponding parts 
of the several figures. 

The object of this invention is to obtain a lamp which 
will burn without a chimney, and without danger of explo- 
sion, those hydro carbons which are volatile, and contain 
an excess of carbon. 



90 

The invention consists in the employment or use of a 
perforated cap, vapor tube, wick tube, heaters and deflecting 
plate, arranged as hereinafter described, to effect the desired 
end. The invention also consists in a wick-adjusting mech- 
anism so arranged as to admit, when operated, of the wick 
being elevated with certainty, and, when not used, admitting 
of the wick being in a loose free state within the tube, with- 
out being subjected to any pressure which would retard the 
free ascent of the oil in the wick. 

To enable those skilled in the art to fully understand 
and construct my invention, I will proceed to describe it: — 

A, Figure i, represents the upper part of the body of a 
lamp provided with a socket B at its upper end to receive 
the cap C, the lower end of which is provided with a screw 
flange a, which screws into the socket B. The cap C is 
of cylindrical form, and may be constructed of perforated 
sheet metal, the lower end having a plate b, fitted in it, from 
which the flange a projects, and the upper end having a 
perforated plate c fitted in it. 

Within the cap or perforated cylinder c there is 
secured centrally, a wick tube D. This wick tube is of the 
usual flat form, and in it the wick E is fitted, the wick 
extending down into the body A of the lamp. Adjoining 
the wick tube D, there is a tube F, the lower end of which 
communicates with the interior of the body of the lamp, the 
upper end of said tube being covered by the perforated 
plate c. 

The wick tube D, at one side opposite to that where the 
tube F is attached, has an enlarged space or a chamber d, in 



91 
which the inner end of a horizontal shaft e passes. This 
shaft e has a horizontal rod /fitted on it, containing spurs ^' 
the rod and spurs being within the chamber d. On the 
shaft e, there is placed loosely a metal plate n, said plate 
being at the outer side of the chamber d, the latter having 
its side slotted to admit the shaft e, and rod /, On the shaft 
e, there is placed a spiral spring i, the inner end of which 
bears against the plate h, the outer end bearing against a 
plate or step j, which is attached permanently to shafc e. 
The spring i, it will be seen, has a tendency to keep the 
shaft e shoved outward to the extent of its movement, and 
keep the rod/ and spurs ^, within the chamber d, and free 
from the wick E. On the shaft e, and at the outer side of 
the cap C, there is secured a plate k. The shaft e passes 
through a slot /in the cap C, 

In order to raise or lower the wick E, the shaft e is 
pressed inward, and the spurs g will penetrate the wick, 
and by raising or lowering the shaft e, the wick will be raised 
or lowered accordingly. The plate h covers the slot in the 
side of chamber d, and prevents the escape of gas or vapor 
from the wick tube and chamber d ; the plate k retains the 
rod <? in a horizontal position as it is raised and lowered. 
On the upper end of the cap C, there is placed a copper 
dome-shaped heater G, which is secured in proper position 
by a thumb-screw ;;z. This heater is slotted at its upper end 
as shown at 7i, and at the centre of the slot there is fitted a 
longitudinal bar o, the latter dividing the slot n into two 
equal and longitudinal parts. 



92 

The wick tube E extends some distance above the per- 
forated plate c, and on its upper end a collar p is fitted, 
said collar having plates q, projecting from it, slightly- 
inclined from a horizontal plane. Between the inner ends 
of the plates q and the collars p there are openings r. 

On the outer side of the heater G, there are vertical 
ribs s, at the lower end of which there are projections t. 
These projections t serve as bearings for a heater H, which 
is similar to Gin form. The ribs and projections / admit 
of a space u being between the two heaters, and the upper 
end of the heater H is slotted, as shown at v, and has a 
plate w extending upward from each end of it, and inclined 
at an angle of about forty-five degrees. 

The tube F admits of all vapor generated in the body 
A of the lamp escaping up into the heater G, and to the 
flame, the perforated plate c preventing the ignition of the 
vapor below the orifice of the tube. ** 

The plates q of the collar j?^, and the openings r, cause 
a draught to ascend directly upward to the flame, and air is 
also deflected directly against the inner sides of the heater 
G, and becomes intensely heated so as to supply the flame 
with warm oxygen. The bar <?, in the slot n, of heater G, 
serves to divide the flame, and prevents it from ascending 
up through the slot n, before the carbon is consumed. 
Between the two heaters G, H, oxygen passes and becomes 
highly rarefied, and unites with the carbon in the flame, 
insuring perfect combustion. 

The plates w at the ends of the slot v of heater H, 
serve to spread the flame, and diminish its height, thereby 



93 

keeping the flame at the point where the heat is most 
intense. The flame at the slot n, in heater G, is merely a 
gas-generating flame, the illuminating flame having its base 
at the slot v of heater H. 

By this arrangement the flame is supplied with suffi- 
cient oxygen without a chimney to support proper combus- 
tion, and produce a brilliant illuminating flame, and the 
vapor which passes up through tube F is consumed without 
danger of being ignited below the orifice of said tube. 

I am aware that dome-shaped heaters have been pre- 
viously used, and also that perforated caps have been used 
in connection with said heaters, and I do not claim said 
parts when separately considered, but 

I do claim as new and desire to secure by Letters 
Patent : 

First -T\i^ arrangement of the heaters G, H, with a space 
between them, communicating directly with the external air 
in connection with the collar/, and plates q, q, fitted to the 
top of the wick tube E, and the perforated cap C, substan- 
tially as and for the purpose set forth. 

Second. — In combination with the parts aforesaid, the 
vapor tube F, placed within the cap C, and adjoining or 
contiguous to the wick tube, as and for the purpose 
specified. 

Third. — The shaft e, provided with the rod/", and spurs 
g, which are within the chamber d of the wick tube in 
connection with the plates h, J, k, and spring i, on said 
shaft, all being arranged to operate as and for the purpose 
set forth. 



SPECIFICATION OF REISSUE. 



To all 'Whom it may concern : 

Be it known that I, Joshua E. Ambrose, of Plattsville, 
in the county of Weld and Territory of Colorado, have 
invented a new improvement in lamps ; and I do hereby 
declare the following, when taken in connection with the 
accompanying drawings, and the letters of reference marked 
thereon, to be a full, clear, and exact description of the 
same, and which said drawings constitute part of this speci- 
fication, and represent, in — 

Figure i, vertical central section ; Fig. 2, top view ; Fig. 
3, a top view with the heater detached ; Fig. 4, detached 
plan or top view of the wick adjuster. 

This invention relates to an improvement in that class 
of burners designed for burning hydrocarbons. In this class 
of burners the wick adjuster must necessarily penetrate the 
wick tube in order to come in contact with the wick. In the 
use of these burners it is found that the gas which is 
unavoidably generated witnin the lamp will escape through 
the tube around the wick adjuster, and pass off to mingle 
with the surrounding atmosphere to the discomfort of per- 
sons near, if not detrimental to their health, and as this gas 
is highly inflammable it frequently ignites from the flame of 
the lamp, and often causes explosion. 



95 

The object of this invention is to combine with the wick 
tube and adjuster, such a means of escape for the gas that it 
may pass so freely directly to the flame as to be there con- 
sumed, and thus prevent its escape around the adjuster; 
also, the construction of a burner which may be used with- 
out a chimney. 

The invention consists, first, in combining with the 
wick tube and adjuster an auxiliary passage leading directly 
from the lamp up to within such proximity to the flame that 
the gas from the lamp, flowing freely through this auxiliary 
passage, will pass to, and be consumed by, the flame ; second, 
in combining in a lamp-burner a deflector, a perforated 
air-distributer, with the deflector forming the combustion- 
chamber, a wick tube extending from the fount to the com- 
bustion chamber, an adjusting device to regulate the eleva- 
tion of the wick, and a tube to conduct the gas from the fount 
to the chamber above the air-distributer ; third, in the employ- 
ment of a perforated cap, wick-tube, heaters, and deflecting- 
plate, combined and arranged as hereinafter described ; 
fourth, in a wick-adjusting mechanism, arranged so as to 
admit of the wick being elevated with certainty, and when 
not in use allow the wick to be loose and free within the 
tube — that is, without any pressure from the adjuster — to 
allow the free flow of the oil. 

A represents the upper or neck portion of the body of 
a lamp, provided at its upper end with the usual socket B, 
to receive the cap C, the lower end of the cap being provided 
with a threaded flange a, to fit the corresponding thread in 
the socket. The cap C is, by preference, of cylindrical 



96 

form, and constructed from perforated sheet metal, the 
lower end having a plate, b, fitted into it, the said plate 
being a part of, or attached to, the flange a. ^ is a perforated 
air-distributer, which, with the deflector, forms the combus- 
tion-chamber, into which the wick-tube D extends. Within 
the tube the wick E is arranged, and the tube is fitted with 
an adjuster (here represented as an improved adjuster), to 
be hereinafter described. An auxiliary tube or passage, F, 
is formed, the lower end of which communicates with the 
interior of the body of the lamp, and the upper end opening 
near the upper end of the wick tube, so that the gas which 
is generated within the lamp, instead of passing out through 
the opening in the tube for the wick adjuster, as it otherwise 
would, will pass up through this tube or passage in such 
proximity to the flame that it is consumed. The termination 
of this tube is here represented as at the perforated plate c, 
the perforations of, the plate being sufficient for the free 
passage of gas to the flame. On the upper end of the cap 
C there is placed a copper dome-shaped heater, G, which is 
secured in proper position by a thumb-screw, m. This 
heater is slotted at its upper end, as shown at «, and at the 
centre of the slot there is fitted a longitudinal bar, o, the 
latter dividing the slot n into two equal longitudinal parts. 
The wick tube D extends some distance above the perfo- 
rated plate c, and on its upper end a collar, p, is fitted, the 
said collar having plates q projecting from it, slightly in- 
clined from a horizontal plane. Between the outer edges of 
the plates q and the collar p there are openings r. On the 
outer side of the heater G there are vertical ribs s, at the 



97 

lower ends of which there are projections i. These projec- 
tions / serve as bearings for a heater, H, which is similar to 
Gin form. The ribs and projections t admit of a space, u, 
being between the two heaters, and the upper end of the 
heater H is slotted, as shown at v. Fig. 2, and has plates w, 
extending upward from each end of it, and inclined toward 
each other at an angle of about forty-five degrees. The 
plates q of the collar p and the openings r, cau^e a draft to 
ascend directly upward to the flame, and air is also de- 
flected directly against the inner sides of the heater G, 
and becomes intensely heated, so as to supply the flame 
with warm oxygen. The bar in the slot n of the heater G 
serves to divide the flame, and prevents it from ascending 
up through the slot n before the carbon is consumed. 
Between the two heaters G, H, oxygen passes, and becomes 
highly rarefied, and unites with the carbon in the flame, 
insuring perfect combustion. 

The plates w, at the ends of the slot v of the heater H, 
serve to spread the flame and diminish its height, thereby 
keeping the flame at the point where the heat is most intense. 
The flame at the slot n in the heater G is merely a gas- 
generating flame, the illuminating flame having its base at 
the slot V of the heater H. The wick tube D at one side 
(the side opposite that to which the tube F is attached) has 
an enlarged space or a chamber, d, in which the inner end 
of a horizontal shaft, e, passes. This shaft e has a horizon- 
tal rod, f, fitted on it, containing spurs ^^^, the rod and spurs 
being within the chamber d. On the shaft e there is placed 
loosely a metal plate, h, the said plate being at the outer 



98 

side of the chamber d, the latter having its side slotted to 
admit the shaft e and rod f. On the shaft e there is placed 
a spiral spring, z, the inner end of which bears against the 
plate h, the outer end bearing against a plate or step, /, 
which is attached permanently to the shaft e. The spring /, 
it will be seen, has a tendency to keep the shaft e shoved 
outward to the extent of this movement, and keep the rod f 
and spurs g within the chamber d, and free from the wick E. 
On the shaft e, and at the outer side of the cap C, there is 
secured a plate, k. The shaft e passes through a slot, /, in 
the cap C. 

In order to raise or lower the wick E the shaft e is 
pressed inward, and the spurs g will penetrate the wick, 
and by raising or lowering the shaft e the wick will be raised 
or lowered accordingly. The plate h covers the slot in the 
side of the chamber d, and prevents the escape of gas or 
vapor from the wick tube and chamber d. The plate k 
retains the rod ^ in a horizontal position as it is raised and 
lowered. 

I claim as my invention — 

1. In combination with the wick tube and a mechanism 
for adjusting the wick, an auxiliary tube or passage leading 
from the lamp upward, to conduct the gas from within the 
lamp to the flame without the mixture of air with the gas 
below the upper orifice of the tube, substantially as set 
forth. 

2. The combination, in a lamp-burner, of the follow- 
ing elements : First, a deflector ; second a perforated air- 
distributer, which, with the deflector, forms the combustion- 



99 

chamber ; third, a wick tube extending from the fount to 
the combustion-chamber ; fourth, a tube or passage to con- 
duct the gas from the fount to said combustion-chamber, 
substantially as described. 

3. The combination, in a lamp-burner, of the following 
elements: First, a deflector; second, a perforated air-dis- 
tributer, which, with the deflector, forms the combustion- 
chamber ; third, a wick tube extending from the fount to 
the combustion-chamber ; fourth, a tube or passage to con- 
duct the gas from the fount to said combustion-chamber ; 
fifth, an adjusting device to regulate the elevation of the 
wick, substantially as described. 

4. The combination of the heaters G H, with a space 
between them, communicating directly with the external 
air, in connection with the collar jz^ and plates q q, fitted on 
the top of the wick tube E, and the perforated cap C, sub- 
stantially as and for the purpose set forth. 

5. The shaft e, provided with the rod f and spurs g, 
which are within the chamber d of the wick tube, in connec- 
tion with the plates h j k and spring i on the said shaft, all 
being arranged to operate as and for the purpose set forth. 

JOSHUA E. AMBROSE. 



DECISION OF SUPREME COURT OF THE 
UNITED STATES. 



NO. 31, OCTOBER TERM, I 88 I 



Edward Miller & Co., Appellants, 

vs. 
The Bridgeport Brass Company. 



This was a suit brought to restrain the infringement of a 
patent, and for an account of profits, etc. The patent was 
for an alleged improvement in lamps, and was originally 
granted to Joshua E. Ambrose, October 16, i860, for four- 
teen years, and was extended for seven years longer. It 
was twice surrendered and reissued, once in May, 1873, ^^^ 
again in January, 1876. The court below dismissed the 
bill on the ground that the second reissue, on which the suit 
was brought, was not for the same invention which was 
described and claimed in the original patent. We agree 
with the Circuit Court in the conclusion to which it came. 
The original patent described a combination of devices, 
amongst other things, two domes or deflectors, one above 
the other, elevated above a perforated cap through which a 
wick tube and a vapor tube ascended. It was claimed that 
this combination of devices, especially including the two 



lOI 

domes, which admitted the external air between them for 
producing a more perfect combustion, would make a lamp 
which, without a chimney, and without danger of explosion, 
would burn those hydrocarbons which are volatile and 
contain an excess of carbon. The invention proved a 
failure, but it was found that the use of one of the domes 
(and the other parts), with the restoration of the chimney, 
would be a real improvement, and both plaintiff and defend- 
ant made such lamps in large quantities. Fifteen years 
after the original patent was granted, the patentee (or 
rather his assignee) discovers that the improved lamp was 
really a part of his original invention, and that by inadver- 
tence and mistake he had omitted to claim it. We think, 
however, that the court below was clearly right in holding 
that the invention specified in the second claim of the re- 
issued patent (which is the one in question here) is not the 
same invention which was described and claimed in the 
original patent. The latter was for a double dome without 
a chimney, the peculiarity of the supposed invention being 
the use of the double dome as a means of dispensing with 
the chimney. The reissue is for a single dome with a 
chimney. It is not only obviously a different thing, but it 
is the very thing which the patentee professed to avoid and 
dispense with. 

But there is another grave objection to the validity of 
the reissued patent in this case. It is manifest on the face 
of the patent when compared with the original, that the 
suggestion of inadvertence and mistake in the specification 
was a mere pretence ; or if not a pretence, the mistake was 



I02 

SO obvious as to be instantly discernible on opening the 
Letters Patent, and the right to have it corrected was aban- 
doned and lost by unreasonable delay. The only mistake 
suggested is, that the claim was not as broad as it might 
have been. This mistake, if it was a mistake, was apparent 
upon the first inspection of the patent, and if any correction 
was desired, it should have been applied for immediately. 

These afterthoughts, developed by the subsequent course 
of improvement, and intended, by an expansion of claims, to 
sweep into one net all the appliances necessary to monopo- 
lize a profitable manufacture, are obnoxious to grave ani- 
madversion. The pretence in this case that there was an 
inadvertence and oversight which had escaped the notice 
of the patentee for fifteen years is too bald for human cre- 
dence. He simply appealed from the judgment of the 
Office in i860, to its judgment in 1876; from the commis- 
sioner and examiners of that date to the commissioner 
and examiners of this : and upon a matter that was obvious 
on the first inspection of the patent. If a patentee who 
has no corrections to suggest in his specification except 
to make his claim broader and more comprehensive, uses 
due diligence in returning to the Patent Office, and says 
" I omitted this," or " My solicitor did not understand 
that," his application may be entertained, and, on a 
proper showing, correction may be made. But it must be 
remembered that the claim of a specific device or combi- 
nation, and an omission to claim other devices or combi- 
nations apparent on the face of the patent, are, in law, 
a dedication to the public of that which is not claimed. It 



I03 

is a declaration that that which is not claimed is either not 
the patentee's invention, or, if his, he dedicates it to the 
pubhc. This legal effect of the patent cannot be revoked 
unless the patentee surrenders it and proves that the speci- 
fication was framed by real inadvertence, accident, or mis- 
take, without any fraudulent or deceptive intention on his 
part : and this should be done with all due diligence and 
speed. Any unnecessary laches or delay in a matter thus 
apparent on the record affects the right to alter or reissue 
the patent for such cause. If two years' public enjoyment 
of an invention with the consent and allowance of the 
inventor, is evidence of abandonment, and a bar to an 
application for a patent, a public disclaimer in the patent 
itself should be construed equally favorable to the public. 
Nothing but a clear mistake, or inadvertence, and a speedy 
application for its correction, is admissible when it is sought 
merely to enlarge the claim. 

The power given by the law to issue a new patent upon 
the surrender of the original, for the correction of errors and 
mistakes, has been greatly misunderstood and abused. It 
was first contained in the Act of July 3, 1832, and the law 
was adopted in view of suggestions made in several judg- 
ments of this court. But it was carefully confined to cases 
where the patent was invalid or inoperative by reason of a 
failure to comply with any of the terms and conditions 
prescribed by the law, for giving a clear and exact descrip- 
tion of the invention, and where such failure was due to 
inadvertence, accident, or mistake, without any fraudulent 
or deceptive intention. This being shown, a new patent. 



I04 

with a correct specification, was authorized to be issued for 
the same invention. The Act of 1836 enlarged the power 
to grant reissues by adding an additional ground for reissue, 
namely, that the patentee had inadvertently claimed in his 
specification, as his own invention, more than he had a right 
to claim as new. And, with that addition, the law has con- 
tinued substantially the same to the present time. The 53d 
section of the Act of 1870, which was the law on this sub- 
ject when the reissue in the present case was granted, was 
in the following words: "Whenever any patent is inoper- 
ative or invalid by reason of a defective or insufficient 
specification, or by reason of the patentee claiming as 
his own invention or discovery, more than he has a right to 
claim as new, if the error has arisen by inadvertence, acci- 
dent, or mistake, and without any fraudulent or deceptive 
intention, the commissioner shall, on the surrender of such 
patent, and the payment of the duty required by law, cause 
a new patent for the same invention, and in accordance 
with the corrected specification, to be issued to the patentee." 
It will be observed that whilst the law authorizes a reissue 
when the patentee has claimed too much, so as to enable 
him to contract his claim, it does not, in terms, authorize a 
reissue to enable him to expand his claim. The great object 
of the law of reissues seems to have been to enable a paten- 
tee to make the description of his invention more clear, 
plain, and specific, so as to comply with the requirements of 
the law in that behalf, which were very comprehensive and 
exacting. The Act of 1793, section 3, required an applicant 
for a patent " to deliver a written description of his invention. 



I05 

and of the manner of using, or process of compounding the 
same, in such full, clear, and exact terms as to disting-uish 

7 7 7 O 

the same from all other things before known, and to enable 
any person skilled in the art or science of which it is a 
branch, or with which it is most nearly connected, to make, 
compound, and use the same. And in the case of any 
machine, he shall fully explain the principle, and the sev- 
eral modes in which he has contemplated the application of 
that principle or character, by which it may be distinguished 
from other inventions ; and he shall accompany the whole 
with drawings and written references, where the nature of 
the case admits of drawings." This careful and elaborate 
requirement was substantially repeated in the Patent Act of 
July 4th, 1836 (sec. 6). with this addition : "and shall par- 
ticularly specify and point out the part, improvement, or 
combination which he claims as his own invention or dis- 
covery." Although it had been customary to append a 
claim to most specifications, this was the first statutory 
requirement on the subject. It was introduced into the law 
several years subsequent to the creation of reissues ; and it 
was in the 13th section of this Act of 1836, that provision 
was made for a reissue to correct a claim which was too 
broad in the original. Now, in view of the fact, that a re- 
issue was authorized for the correction of mistakes in the 
specification before a formal claim was required to be made ; 
and of the further fact that when such formal claim was 
required, express power was given to grant a reissue for the 
purpose of making a claim more narrow than it was in the 
original, without any mention of a reissue for the purpose of 



io6 

making a claim broader than it was in the original ; it is 
natural to conclude that the reissue of a patent for the latter 
purpose was not in the mind of Congress when it passed the 
laws in question. It was probably supposed that the paten- 
tee would never err in claiming too little. Those who have 
any experience in business at the Patent Office know the 
fact, that the constant struggle between the office and appli- 
cants for patents has reference to the claim. The patentee 
seeks the broadest claim he can get. The office, in behalf 
of the public, is obliged to resist this constant pressure. At 
all events, we think it clear that it was not the special pur- 
pose of the legislation on this subject to authorize the 
surrender of patents for the purpose of reissuing them with 
broader and more comprehensive claims, although, under 
the general terms of the law, such a reissue may be made 
where it clearly appears that an actual mistake has inad- 
vertently been made. But, by a curious misapplication of 
the law it has come to be principally resorted to for the 
purpose of enlarging and expanding patent claims. And 
the evils which have grown from the practice have assumed 
large proportions. Patents have been so expanded and 
idealized, years after their first issue, that hundreds and 
thousands of mechanics and manufacturers, who had just 
reason to suppose that the field of action was open, have 
been obliged to discontinue their employments, or to pay 
an enormous tax for continuing them. 

Now whilst, as before stated, we do not deny that a 
claim may be enlarged in a reissued patent, we are of opin- 
ion that this can only be done when an actual mistake has 



I07 

occurred; — not from a mere error of judgment, (for that 
may be rectified by appeal,) but a real bona-fide mistake, 
inadvertently committed ; such as a court of chancery, in 
cases within its ordinary jurisdiction, would correct. Re- 
issues for the enlargement of claims should be the exception 
and not the rule. And when, if a claim is too narrow, that 
is, if it does not contain all that the patentee is entitled to, 
the defect is apparent on the face of the patent, and can be 
discovered as soon as that document is taken out of its 
envelope and opened, there can be no valid excuse for delay 
in asking to have it corrected. Every independent inventor, 
every mechanic, every citizen, is affected by such delay, 
and by the issue of a new patent with a broader and more 
comprehensive claim. The granting of a reissue for such a 
purpose, after an unreasonable delay, is clearly an abuse of 
the power to grant reissued, and may justly be declared 
illegal and void. It will not do for the patentee to wait 
until other inventors have produced new forms of improve- 
ment, and then, with the new light thus acquired, under 
pretence of inadvertence and mistake, apply for such an 
enlargement of his claim as to make it embrace these new 
forms. Such a process of expansion carried on indefinitely, 
without regard to lapse of time, would operate most unjustly 
against the public, and is totally unauthorized by the law. 
In such a case, even he who has rights, and sleeps upon 
them, justly loses them. 

The correction of a patent by means of a reissue, where 
it is invalid or inoperative for want of a full and clear 
description of the invention, cannot be attended with such 



r^ 



io8 



injurious results as follow from the enlargement of the 
claim. And, hence, a reissue may be proper in such cases, 
though a longer period has elapsed since the issue of the 
original patent. But in reference to reissues made for the 
purpose of enlarging the scope of the patent, the rule of 
laches should be strictly applied ; and no one should be re- 
lieved who has slept upon his rights, and has thus led the 
public to rely on the implied disclaimer involved in the 
terms of the original patent. And when this is a matter 
apparent on the face of the instrument, upon a mere com- 
parison of the original patent with the reissue, it is com- 
petent for the courts to decide whether the delay was 
unreasonable, and whether the reissue was therefore con- 
trary to law and void. 

We think that the delay in this case was altogether 
unreasonable, and that the patent could not lawfully be 
reissued for the purpose of enlarging the claim and extend- 
ing the scope of the patent. 

The decree of the Circuit Court is affirmed. 

True copy. 

Test : JAMES H. McKENNA, 

Clerk Sup, Court U. S. 



.<-^^ ^" 



<-^^ 



"^. ^.'^' 









^^^. 



^-^ Vo Si 



^ ,0" 



^ «»?•/>■; 



% ''. 






v'^' 






t/> -\^ 



.,#'^^.. 






'^^^^^r^' 




< 



■i ^ 



.0 o. 



^-^ 



;0 C> -tl^ ^ 



'^. .<^' 



^\p^%' ^' ^^ 




^' '\ 




"-<. -i^' 



_ '^ 






^'^^-^;^s- ^r 




ao -r ,<? '^ ^. -^ 






'/. '91 



\'' xV 



'XT' T^ i; (A </* i^^N 



.vP'-.* r ■'■'', 




^% 



V 



= 7 












°°^ ,aN^<»^ "••''&. 




.0 c 






^^^^t^^ ^ J> "ri^^ ' /'P^^\<'\i} Neutralizing agent: Magnesium Oxide 



^^. 












^ c.^ 






\ - Deacidified using the Bookkeeper process. 
Neutralizing agent: Magnesii 
Treatment Date: Sept. 2003 

\^ .^^^^< PreservationTechnologies 

A WORLD LEADER IN PAPER PRESERVATION 

1 1 1 Thomson Park Drive 
Cranberry Township, PA 16066 






l~ir>A\ -j-rn 






0- 



c 












a' 



r> ^ 



-^u 



\- 



^,#' 



e^^&> 






.H 



o. 



. . s ^ A^^ 












^ .-'V 






, .. -^ A 






.^"^ 













'\^' 
.<^^ 









■;<x, . ^ 









^Q^^. 






,0 



%>^^ 



o 






.^^^. 



^^ 










.^^ \ 









